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Law of Ukraine:

On the Protection of Rights for Inventions and Utility Models

Chapter I. GENERAL PROVISIONS

Article 1. Definitions
Article 2. The Office
Article 3. International Treaties
Article 4. Rights of Aliens and Other Persons

Chapter II. LEGAL PROTECTION OF INVENTIONS (UTILITY MODELS)

Article 5. Conditions for the Provision of Legal Protection
Article 6. Conditions for Patentability of an Invention
Article 7. Conditions for Patentability of a Utility Model

Chapter III. RIGHT TO OBTAIN A PATENT

Article 8. Right of Inventor
Article 9. Shopright
Article 10. Right of Successor in Title
Article 11. Right of First Applicant

Chapter IV. PROCEDURE FOR OBTAINING A PATENT

Article 12. Application
Article 13. Filing Date
Article 14. Priority
Article 15. Examination of an Application
Article 16. Withdrawal of an Application
Article 17. Substitution of Applications
Article 18. Temporary Legal Protection
Article 19. Publications on the Grant of a Patent
Article 20. Registration of a Patent
Article 21. Grant of a Patent
Article 22. Appeal Against the Decision on an Application

Chapter V. RIGHTS AND DUTIES ARISING FROM A PATENT

Article 23. Rights Arising from a Patent
Article 24. Compulsory Alienation of Rights
Article 25. Acts Which Are Not Considered As Infringement of Rights
Article 26. Duties Arising from a Patent

Chapter VI. TERMINATION AND INVALIDATION OF A PATENT

Article 27. Termination of a Patent
Article 28. Invalidation of a Patent

Chapter VII. PROTECTION OF RIGHTS

Article 29. Infringement of Patentee's Rights
Article 30. Disputes Settled Judicially

Chapter VIII. FINAL PROVISIONS

Article 31. Fees
Article 33. State Promotion of the Creation and Use of Inventions (Utility Models)

Enactment.

Resolution of the Supreme Rada of Ukraine on the enactment of the law of Ukraine on the protection of rights for inventions and utility models. 


         The present Law governs the relations arising out of acquisition and exercise of the right of property for inventions and utility models in Ukraine.

Chapter I. GENERAL PROVISIONS

Article 1. Definitions

The terms set forth below shall have the following meaning in the present Law:

-- "the Office" means State Committee of Ukraine for industrial property (Gospatent Ukrainy);
-- "invention (utility model)" means a result of creative activity of Man in any field of technology;
-- "inventor" means the individual whose creative work resulted in the creation of an invention
(utility model);
-- "patent" means a patent of Ukraine for an invention (utility model);
-- "patented invention (utility model)" means the invention (utility model) which has been granted a patent;
-- "person" means a national or legal entity;
-- "application" means a set of documents necessary for the grant of a patent;
-- "applicant" means the person who has filed an application;
-- "priority of an application" (priority) means precedence in filing an application;
-- "priority date" means the date on which an application was filed with the Office or respective authority of a State Party to the Paris Convention for the Protection of Industrial Property under which the priority has been claimed;
-- "employer" means the person who engaged a worker under labour agreement (contract);
-- "international application" means the application which was filed under Patent Co-operation Treaty;
-- "Register" means State Register of Patents of Ukraine for Inventions or State Register of Patents of Ukraine for Utility Models.

Article 2. The Office

1. The Office shall ensure the implementation of the governmental policy in the field of legal protection of inventions (utility models), accept applications for processing, carry out examination of applications and State registration of patents for inventions (utility models), publish official data, grant patents and perform other functions provided for by the Regulations Concerning the State Committee of Ukraine for Industrial Property, as approved by the Cabinet of Ministers of Ukraine.

2. On contractual basis, the Office may provide any person with information on the prior art and with other services relating to the information and documentation in accordance with the procedure as prescribed by the Office.

3. Office's operation shall be financed from the state budget.

Article 3. International Treaties

Whenever an international treaty of Ukraine establishes rules other than those provided in the legislation of Ukraine on inventions (utility models), rules of the international treaty shall apply.

Article 4. Rights of Aliens and Other Persons

1. Aliens and stateless persons shall have, under the present Law, the same rights as the persons of Ukraine, in accordance with international treaties of Ukraine or on the basis of the principle of reciprocity.

2. Aliens and other persons who are domiciled or permanently established outside Ukraine, in their relations with the Office, shall exercise their rights through agents registered in accordance with the Regulations Concerning Representatives for Intellectual Property, as approved by the Cabinet of Ministers of Ukraine.

 

Chapter II. LEGAL PROTECTION OF INVENTIONS (UTILITY MODELS)

Article 5. Conditions for the Provision of Legal Protection

1. Legal protection shall be provided to that invention (utility model) which is not contrary to public interests, principles of humanity and morality and which fulfils conditions for patentability.

2. An invention may have as its subject matter:

-- a product (device, substance, strain of micro-organism, plant and animal cell culture);
-- a process.

A utility model may have as its subject matter a design of a device.

3. Under the present Law, legal protection may not be provided to:

-- discoveries, scientific theories and mathematical methods;
-- methods of economy organisation and management;
-- plans, conventions, schedules, rules;
-- methods of mental acts;
-- computer programs;
-- results of artistic designing;
-- integrated circuits topologies;
-- plant and animal varieties etc.

4. Particulars of the protection of rights for inventions (utility models) which fall under State secret shall be defined by special legislation.

5. The right of property for an invention (utility model) shall be certified by a patent.

Duration of the patent for an invention shall be 20 years from the date of filing the application with the Office.

Duration of the patent for an utility model shall be 5 years from the date of filing the application with the Office and shall be extended by the Office, upon request of the patentee, but not more than for three years.

Early termination of a patent shall be effected subject to the conditions as stated in Article 27 of the present Law.

6. The scope of the legal protection provided shall be defined by the claims of invention (utility model). The claims shall be interpreted within the description of the invention (utility model) and related drawings.

7. A patent granted for a process of producing a product shall be effective likewise for the product directly obtained with that process.

Article 6. Conditions for Patentability of an Invention

1. An invention shall fulfil conditions for patentability provided it is novel, has an inventive step and is industrially applicable.

2. An invention shall be considered novel unless it forms a part of the prior art. To define novelty of an invention, subject matters forming a part of the prior art may be taken into account but separately.

3. The prior art shall include everything made available to the public anywhere in the world prior to the date of filing the application with the Office or, had the priority been claimed, prior to its priority date.

4. The prior art shall include likewise the contents of any application for the grant of a patent of Ukraine and international application which designates Ukraine, in the wording it had been filed initially, provided that that application or patent granted thereunder will be published later in accordance with the prescribed procedure and that filing date of such an application or, had the priority been claimed, its priority date precedes the relevant date referred to in paragraph 3 of the present Article.

5. Recognition of an invention as patentable shall not be affected by the disclosure of information thereon by the inventor or the person who obtained such an information from the inventor directly or indirectly, within 12 months prior to the date of filing the application with the Office or, had the priority been claimed, prior to its priority date. In this case the burden to prove circumstances of information disclosure lies on the person concerned with the application of the present paragraph.

6. An invention shall have an inventive step unless, according to experts, it results from the prior art. Evaluation of the inventive step shall not take into account the contents of the applications referred to in paragraph 4 of the present Article.

7. An invention shall be considered industrially applicable provided it may be used in industry or any other field of activity.

Article 7. Conditions for Patentability of a Utility Model

1. A utility model shall fulfil conditions for patentability provided it is novel and industrially applicable.

2. A utility model shall be considered novel unless it forms a part of the prior art. To define novelty, designs forming a part of the prior art may be taken into account but separately.

3. The prior art shall include everything made available to the public anywhere in the world prior to the date of filing the application with the Office or, had the priority been claimed, prior to its priority date.

4. The prior art shall include likewise the contents of any application for the grant of a patent of Ukraine and international application which designates Ukraine, in the wording it had been filed initially, provided that that application or patent granted thereunder will be published later in accordance with the prescribed procedure and that filing date of such an application or, had the priority been claimed, its priority date precedes the relevant date referred to in paragraph 3 of the present Article.

5. Recognition of a utility model as patentable shall not be affected by the disclosure of information thereon by the inventor or the person who obtained such an information from the inventor directly or indirectly, within 12 months prior to the date of filing the application with the Office or, had the priority been claimed, prior to its priority date. In this case the burden to prove circumstances of information disclosure lies on the person concerned with the application of the present paragraph.

6. A utility model shall be considered industrially applicable provided it may be used in industry or any other field of activity.

 

Chapter III. RIGHT TO OBTAIN A PATENT

Article 8. Right of Inventor

1. The inventor or his successor shall have the right to obtain a patent, unless the present Law provides otherwise.

2. Inventors who created an invention (utility model) jointly shall have equal rights to obtain a patent, unless the agreement between them provides otherwise.

3. In case of the revision of agreement concerning the composition of inventors the Office, upon joint petition of persons stated in the application as inventors as well as inventors not stated as such in the application shall amend relevant documents in accordance with the procedure as prescribed by the Office.

4. The inventor shall have the right of authorship which is inalienable personal right and is protected permanently.

Article 9. Shopright

1. The employer shall have the right to obtain a patent whenever an invention (utility model) has been created as a result of the performance of official duties or fulfilment of employer's assignment, unless labour agreement (contract) provides otherwise. The employer shall have the duty to conclude an agreement with the inventor in writing and, under its terms and conditions, to offer remuneration to the inventor based on economic value of the invention (utility model) and on any other benefit the employer has reaped from the invention (utility model).

Disputes over modalities of payment of the remuneration and amount thereof shall be settle judicially.

2. The inventor shall file with the employer a written notice of the invention (utility model) he has created, supported by the description disclosing the invention (utility model) in a manner sufficiently clear and complete.

Unless the employer files an application with the Office within four months from the date of receipt of that notice, the right to obtain a patent shall be conferred on the inventor.

Article 10. Right of Successor in Title

A successor in title of the inventor or of the employer respectively shall have the right to obtain a patent.

The inventor may transfer his right to obtain a patent to the Fund of Inventions of Ukraine which, on behalf of the State and to its benefit, shall exercise the rights of patentee set forth in the present Law. The Fund of Inventions of Ukraine shall operate under the regulations as approved by the Office.

Article 11. Right of First Applicant

The right to obtain the patent for an invention (utility model) which has been created by separate work shall belong to the applicant whose application has earlier date of filing with the Office or, had the priority been claimed, earlier priority date, unless the said application is considered withdrawn, has been withdrawn or rejected.

 

Chapter IV. PROCEDURE FOR OBTAINING A PATENT

Article 12. Application

1. A person wishing to obtain a patent and being entitled thereto shall file an application with the Office.

2. Upon instruction of the applicant, the application may be filed through a representative for intellectual property or any other agent.

3. The application for invention shall relate to one invention or to a group of inventions so linked as to form a single inventive concept (requirement of unity of invention).

The application for utility model shall relate to one utility model (requirement of unity of utility model).

4. The application shall be drafted in Ukrainian and shall contain:

-- a request for the grant of a patent of Ukraine for invention (utility model);
-- a description of the invention (utility model);
-- the claims of invention (utility model);
-- a drawing (if there is a reference thereto in the description);
-- an abstract.

5. The request for the grant of a patent shall state the applicant (applicants) and his address as well as inventor (inventors).

The inventor shall have the right to ask that he should not be mentioned as such in any Office's publications, particularly data on the application or the patent.

6. The description of the invention (utility model) shall be stated in the prescribed order and shall disclose the invention (utility model) in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

7. The claims of invention (utility model) shall reflect its essence, shall be based on the description and shall be stated in the prescribed order clearly and concisely.

8. An abstract shall be drafted for nothing but informational purposes. It can not be taken into account for other purposes, in particular the interpretation of the claims of invention (utility model) and definition of the prior art.

9. Other requirements of application documents shall be prescribed by the Office.

10. The filing of an application shall be subject to the payment of a fee. Proof of payment of the said fee shall be submitted to the Office together with the application or within two months from the filing date.

Article 13. Filing Date

1. The filing date shall be the date of receipt by the Office of the documents which contain at least:

     - a petition written in optional manner in Ukrainian to the effect that a patent be granted;
     - data concerning the applicant and his address stated in Ukrainian;
     - a part which on the face of it appears to be a description of the invention (utility model) stated in Ukrainian or any other language. In the latter case, to preserve the filing date, the translation of that part into Ukrainian shall be made available to the Office within two months from the filing date.

2. If the Office finds that application documents do not, at the time of receipt, fulfil the requirements listed in paragraph 1 of the present Article, it shall notify the applicant accordingly.

To amend documents, the applicant shall have two months from the date of receipt of the Office's notice. If within that time limit defects are eliminated, the filing date will be the date of receipt of corrected documents by the Office. Otherwise, the application shall be considered not to have been filed and the applicant shall be notified accordingly.

3. If the application which contains documents as specified in paragraph 1 of the present Article refers to a drawing which was not made available to the Office on the date of receipt of the application by the Office, the latter shall notify the applicant accordingly and shall invite him, at his discretion, to submit that drawing or to exclude the reference thereto from the application.

Whenever the said drawing is made available to the Office within two months from the date of receipt of the Office's notice by the applicant, the filing date shall be the date of its receipt by the Office. If the applicant fails, within that time limit, to comply with the invitation made, the application shall be considered not to have been filed and the applicant shall be notified accordingly.

4. The Office shall communicate the decision to accord the filing date to the applicant after the proof of payment of the filing fee has been made available under Article 12, paragraph 10, of the present Law. In the case the requirements of Article 12, paragraph 10, of the present Law are not fulfilled, the said decision shall not be communicated and the application shall be considered withdrawn.

Article 14. Priority

1. The applicant shall have the right of priority of an earlier application for the same invention (utility model) within 12 months from the date of filing the earlier application with the Office or respective authority of a State Party to the Paris Convention for the Protection of Industrial Property, unless the priority of that earlier application had been claimed.

2. The applicant wishing to benefit from the right of priority shall, within three months from the date of filing the application with the Office, file a declaration claiming the priority with reference to the filing date and number of the earlier application, and its copy, if that application was filed in a foreign State Party to the Paris Convention for the Protection of Industrial Property, supported by a translation into Ukrainian. Within that time limit, the said documents may be amended. Whenever those documents fail to be submitted in the prescribed time limit, the right of priority of the application shall be considered to have been lost and the applicant shall be notified accordingly.

3. The priority of several earlier applications may be claimed for an application in whole or a specific claim of invention (utility model). In so doing, the time limits whose starting date is the priority date shall be computed from the earliest priority date.

4. The priority shall apply only to those features of invention (utility model) which are indicated in the earlier application whose priority has been claimed.

5. If the claims of invention (utility model) as stated in the earlier application lacks some features of invention (utility model), it shall be suffice, to grant the right of priority, that the description of the earlier application indicates accurately those features.

6. If Office's proceedings for an earlier application are not completed, the earlier application shall be considered withdrawn in that part whose priority has been claimed, with the filing of declaration claiming the priority under the present Article, paragraph 2.

Article 15. Examination of an Application

1. The examination of an application shall be carried out by the Office in accordance with the present Law and regulations established thereunder.

2. The applicant shall have the right, at his own initiative or at the Office's invitation, whether personally or through his agent, to participate in the consideration of questions which have arisen out of examination. The procedure for applicant's or his agent's participation in the consideration of the said questions shall he prescribed by the Office.

3. The applicant shall have the right, at his own initiative, to correct and to rectify the application. Such corrections and rectifications shall not be taken into account if they were filed with the Office after the date of receipt by the applicant of the decision on the grant of the patent or the rejection of the application.

4. If the applicant submits additional documents, the examination shall find out whether they go beyond the disclosure of the invention (utility model) in the application as filed.

Additional documents shall go beyond the disclosure of the invention (utility model) in the application as filed when they contain features which have to be included in the claims of invention (utility model).

Additional documents in that part which goes beyond the disclosure of the invention (utility model) in the application as filed shall not be taken into account during the processing of the application and may be subject to a separate application by the applicant.

5. The Office, having accorded the filing date and received proof of payment of filing fee, shall carry out application examination for formal features, which:

finds out whether the claimed subject matter belongs to the subject matters as specified in Article 5, paragraph 2, of the present Law; checks the application on the compliance with the requirements of Article 12 of the present Law;

checks the proof of payment of the filing fee on the compliance with prescribed requirements.

6. Provided the application does not comply with the requirements of Article 12 of the present Law or the proof of payment of the filing fee does not fulfil prescribed requirements, the Office shall notify the applicant accordingly. In case of lack of compliance with the requirement of unity of invention (utility model), the applicant shall be invited to report on which invention (utility) model should be processed and, where appropriate, to make the application more precise. In this case other inventions (utility models) may be subject to separate applications.

To amend documents, the applicant shall have two months from the date of receipt of the Office's notice. If within that time limit the requirement of unity of invention is not fulfilled, the Office shall carry out the examination of that invention (utility model) which is stated in the claims first. Whenever other defects are not eliminated within the same time limit and the applicant does not file substantiated request to extend that time limit, the Office shall communicate the decision on the rejection of the application to the applicant.

7. If the application fulfils the requirements of Article 12 of the present Law and the proof of payment of the filing fee is correct, the Office shall:

--  on application for invention, notify the applicant that essential examination of the application may be carried out;
--  on application for utility model, communicate the decision on the grant of the patent to the applicant.

8. After the expiration of 18 months from the date of filing an application for invention or, had the priority been claimed, from its priority date, the Office shall publish, in its official bulletin, data on the application which it has found, unless the application is considered withdrawn, has been withdrawn or rejected.

On the request of the applicant, the Office shall publish data on the application prior to the said time limit.

On the demand of the inventor, he shall not be mentioned in data on the application as published.

After data on the application have been published, any person may familiarise himself with application documents in accordance with the procedure as prescribed by the Office. In case data as published contain obvious errors, the applicant shall have the right to ask the Office to correct them.

9. On the request of any person and with proof of payment of fee for the essential examination of the application for an invention, made available to the Office, the latter shall carry out the said examination which checks the claimed invention on the compliance with conditions for patentability.

The applicant may file the said request within three years from the filing date. Any other person may file that request after the publication of data on the application for an invention but not later than three years from the filing date. In such a case such a person shall not participate in resolving questions arising out of application. If documents specified in the present paragraph are not filed with the Office within prescribed time limit, the application shall be considered withdrawn.

10. When carrying out the essential examination of the application for an invention, the Office shall have the right to request the applicant to submit additional documents the absence of which makes the examination impossible as well as to invite him to amend the claims.

The applicant shall have the right, within one month from the date of receipt of the Office's request, to ask that the Office make him available patent documents as opposed to the application.

The applicant shall file additional documents within two months from the date of receipt of the request or of the copies of documents as apposed to the application.

If the applicant, within prescribed time limit, does not submit documents on the Office's request or does not file substantiated request to extend that time limit, the application shall be considered withdrawn.

11. Additional documents in that part which goes beyond the disclosure of the invention (utility model) in the application as filed shall be subject to the procedure as prescribed in paragraph 4 of the present Article.

If the, lack of compliance with the requirement of unity of invention has been noticed at the stage of essential examination of an application, the examination shall be carried out in accordance with the procedure as prescribed in the present Article, paragraph 6.

12. Whenever as a result of essential examination of the application it is found out that the invention, the essence of which is reflected in the claims as proposed by the applicant, fulfils conditions for patentability, the Office shall communicate the decision on the grant of the patent to the applicant. Otherwise, the applicant shall be communicated the decision on the rejection of the application.

13. The applicant may familiarise himself with all documents which are stated in the Office's request or decision. The Office shall, within one month, make available the copies of documents as requested by the applicant.

14. If the applicant does not comply with time limits as prescribed in the present Article (except those specified in paragraph 10) due to valid reasons, the Office may renew them.

The request for a renewal of a time limit shall be filed with the Office within six months from the date of expiration of that time limit.

Article 16. Withdrawal of an Application

The applicant may withdraw the application at any time prior to the date of receipt of the decision on the grant of the patent.

Article 17. Substitution of Applications

The applicant may substitute an application for utility model for an application for invention and vice versa at any time prior to the receipt of the decision on the grant of the patent or on the rejection of application. In this case the date of filing the application and, had the priority been claimed, its priority date shall be preserved.

Article 18. Temporary Legal Protection

1. Data on the application for an invention as published under Article 15, paragraph 8, of the present Law shall provide to the applicant temporary legal protection within the limits of the claims based on which they were published.

2. Temporary legal protection shall operate so that the applicant has the right to be compensated for damages, he suffered after the publication of data on the application, by the person who had really known or received, in Ukrainian with indication of the application number, a written notice to the effect that data on the application for invention which he uses without applicant's authorisation were published.

3. Temporary legal protection shall be terminated from the date of publication, in official bulletin, of data on the grant of the patent, or of the notice to the effect that proceedings for the application have been terminated.

4. Temporary legal protection in respect of the international application shall start operating from the date of its international publication, under the provisions of the present Article, paragraph 2.

Article 19. Publications on the Grant of a Patent

1. The Office, based on the decision on the grant of the patent for an invention (utility model) and with proof of payment of fee for the grant of the patent made available, shall publish, in its official bulletin, data on the grant of the patent which it found.

Unless, within three months from the date of receipt by the applicant of the decision on the grant of the patent, the Office was made available the proof of payment of fee for the grant of the patent, the publication shall not be effected while the application shall be considered withdrawn.

2. Concurrently with the publication of data on the grant of the patent, the Office shall publish the disclosure of the invention (utility model), containing the claims and the description of the invention (utility model) as well as drawings to which the description of the invention (utility model) refers.

3. After data on the grant of the patent have been published, any person may familiarise himself with application documents in accordance with the procedure as prescribed by the Office.

Article 20. Registration of a Patent

1. Concurrently with the publication of data on the grant of the patent, the Office shall conduct the state registration of the patent for an invention (utility model) and shall record relevant data in the Register to this effect. The form of the Register and the manner in which it is maintained shall be prescribed by the Office.

2. After data have been recorded in the Register, any person may familiarise himself with those data in accordance with the procedure as prescribed by the Office.

Article 21. Grant of a Patent

1. The grant of the patent shall be effected by within one month after the state registration of the patent. shall be granted to the person entitled to obtain the patent. right to obtain the patent belongs to several persons, the be granted one patent.

The patent for a utility model shall be granted to the patentee under his responsibility without any guarantee as to the effect of the patent.

2. The form of the patent and contents of data stated therein shall be prescribed by the Office.

3. On the demand of the patentee, the Office shall make corrections of obvious errors in the granted patent and shall include information thereon in the official bulletin.

Article 22. Appeal Against the Decision on an Application

The applicant may lodge an appeal against any Office's decision on the application to the Board of Appeal of the Office (hereinafter referred to as "Board of Appeal") within three months from the date of receipt of the Office's decision or of copies of the requested patent documents.

The Board of Appeal shall process the protest against Office's decision on the application within four months from the date of its lodging, within limits of reasons as stated in the protest.

The applicant may appeal against the decision of the Board of Appeal judicially within six months from the date of receipt of the decision.

 

Chapter V. RIGHTS AND DUTIES ARISING FROM A PATENT

Article 23. Rights Arising from a Patent

1. Rights arising from a patent shall be in effect from the date of publication of data on the grant of the patent provided that annual fee for keeping the patent valid has been paid.

2. The patent shall give rise to the exclusive right of the patentee to use the invention (utility model) at his option unless such a use infringes rights of other patentees.

In case of the use of the invention (utility model) patent for which belongs to several persons, relationship shall be specified by the agreement between them. In the absence of such an agreement, each patentee may use the invention (utility model) at his option but no one of them has the right to authorise (to grant a license for) the use of the invention (utility model) by, or to transfer the right of property for the invention (utility model) to, any other person without consent of other patentees.

Shall be considered the use of an invention (utility model):

-- manufacture, sale offer, introduction in business operations,
-- use or importation, or storage in the said purposes of the product;
-- protected by a patent;

use of the process protected by a patent, or offer for its use in Ukraine if the person offering that process is aware that its use is prohibited without patentee's consent or, as the case may be, this appears to be obvious;

sale offer, introduction in business operations, use or importation, or storage in the said purposes of the product manufactured directly by means of a process protected by a patent.

A product shall be considered as manufactured with the use of a patented invention (utility model) if there was used every feature as included in the independent claim of invention (utility model), or its equivalent feature.

A process protected by a patent shall be considered applicable if there was used every feature as included in the independent claim of invention, or its equivalent feature.

3. The patent shall give rise to the right of the patentee to prohibit other persons from the use of the invention (utility model) without his authorisation, except when such a use is not considered, under the present Law, an infringement of patentee's rights.

4. The patentee may, under an agreement, transfer the right of property for the invention (utility model) to any person who, in such a case, becomes successor in title of the patentee.

5. The patentee shall have the right to authorise (to grant a license for) the use of the invention (utility model) by any other person under a licensing agreement.

6. The agreement on the transfer of the right of property for an invention (utility model) and the licensing agreement shall be considered valid if done in writing and signed by the parties thereto. The said agreements shall be in effect with regard to any other person solely after they have been registered with the Office.

7. The patentee may file with the Office, for official publication, a declaration to the effect that any other person shall be given the authorisation to use the patented invention (utility model). In such a case the annual fee for keeping the patent valid shall be reduced by 50% starting from the year which follows the year of publication of that declaration.

The person who indicated his wish to take advantage of the said authorisation shall have the duty to conclude an agreement on payments with the patentee. Disputes arising from the conclusion and fulfilment of that agreement shall be settled judicially.

Where no one person announced his intention to use the invention (utility model) to the patentee, the latter may file with the Office a written request for the withdrawal of his declaration. In such a case the annual fee for keeping the patent valid shall be paid in the full amount starting form the year which follows the year of publication of that request.

8. Rights arising from a patent shall not affect any other personal property and non-property rights of inventor as governed by other laws of Ukraine.

Article 24. Compulsory Alienation of Rights

Based on public interests and interests of national security, the Cabinet of Ministers of Ukraine shall have the right to authorise the use of an invention (utility model) without consent of the patentee but with payment of appropriate compensation to the latter.

Disputes over conditions of that authorisation, payment and amount of compensation shall be settled judicially.

Article 25. Acts Which Are Not Considered As Infringement of Rights

1. Any person who, prior to the date of filing the application with the Office or, had the priority been claimed, prior to its priority date, to the benefit of his activities, in good faith, had used the claimed invention (utility model) in Ukraine or made considerable and serious preparations for such a use, shall preserve the right to continue that use free of charge or to use the invention (utility model) as it had been planned by the said preparations (right of prior use).

The right of prior use may be transferred to, or conferred on, any other person only together with the establishment or business practice, or that part of the establishment or business practice in which the claimed invention (utility model) had been used or considerable and serious preparations for such a use had been made.

2. Shall not be considered as an infringement of rights granted by the patent the use of a patented invention (utility model):

       in the construction or operation of the vehicle of a foreign State, which enters, temporary or accidentally, the waters, air space or territory of Ukraine provided that the invention (utility model) is used there exclusively for the needs of the said vehicle:

       for non-commercial purpose;
       for scientific purpose or experiment;
       under force majeure (natural disaster, catastrophe, epidemic etc.);
       in case of a single preparation of a drug under physician's prescription.

3. Shall not be considered as an infringement of rights granted by the patent introduction in business operations of the product manufactured with the use of a patented invention (utility model), after the introduction of that product in business operations by the patentee or on his special authorisation.

Article 26. Duties Arising from a Patent

1. The patentee shall in good faith enjoy exclusive right arising from the patent.

Where an invention (utility model) is not used or is underused in Ukraine within three years from the date of publication of data on the grant of the patent, or from the date on which the use of the invention (utility model) was terminated, any person indicating his wish and readiness to use that invention (utility model), had the patentee refused to conclude a licensing agreement, may bring before the court (arbitration court) a petition to the effect that he will be granted an authorisation for the use of the said invention (utility model).

If the patentee fails to prove that the invention (utility model) is not used for valid reasons, the court (arbitration court) shall pronounce a judgement on the grant of authorisation for the use of the invention (utility model) by the person concerned, indicating the limits of its use, duration of authorisation, amount of, and procedure for, remuneration of the patentee.

2. The patentee shall have the duty to authorise (to grant a license for) the use of the invention (utility model) by the holder of a later patent, if the invention (utility model) of the latter is intended for the achievement of other purpose or possesses considerable technical and economic advantages and may not be used without infringing the rights of the first patentee. Such an authorisation may be conditioned by a relevant authorisation of the holder of a later patent who has the duty to give the authorisation if his invention (utility model) improves the invention (utility model) of the holder of the earlier patent or is intended for the achievement of the same purpose. The said authorisation shall be granted in the extent necessary for the use of the invention (utility model) by that patentee who asked for the said authorisation.

Disputes over licenses shall be settled judicially.

 

Chapter VI. TERMINATION AND INVALIDATION OF A PATENT

Article 27. Termination of a Patent

1. The patentee may, at any time, renounce his patent in whole or in part by a declaration filed with the Office. The said renunciation shall be in effect from the date of publication of data thereon in the official bulletin of the Office.

2. The patent for an invention (utility model) shall be terminated unless the annual fee for keeping the patent valid is paid within prescribed time limit.

The annual fee shall be paid for every year in which the patent is in effect, starting from the filing date. Proof of the first payment of the said fee shall be made available to the Office together with proof of payment of fee for the grant of the patent. Proof of payment of fee for every consecutive year shall be made available to the Office prior to the end of a given year provided that the fee is paid within two last months of the year.

The annual fee for keeping a patent valid may be paid and proof of its payment made after available to the Office within six months prescribed time limit. In such a case the amount of annual fee shall be increased by 50%.

The patent shall be terminated from the first day of the year for which the fee has not been paid.

Article 28. Invalidation of a Patent

1. The patent may be considered invalid in whole or in part in case:

the patented invention (utility model) does not fulfil conditions for patentability as prescribed by the present Law;
the claims of invention (utility model) contain features which do not appear in the application as filed;
the requirements of Article 32, paragraph 2, of the present Law are not fulfilled.

2. Any person, within six months from the date of publication of data on the grant of the patent, may file with the Board of Appeal a protest against the grant of the patent. The protest shall be processed by the Board of Appeal within six months from the date of its filing. The patentee shall be familiarised with the protest. The Board of Appeal shall consider the protest within the limits of reasons stated therein. The person who filed a protest as well as the patentee may participate in its consideration. The decision of the Board of Appeal may be appealed against judicially.

If the protest against the grant of the patent was not filed with the Board of Appeal within the prescribed time limit, the patent may be invalidated but judicially.

Invalidated patent or any part thereof shall be considered not to have taken effect from the date of publication of data on the grant of the patent.

 

Chapter VII. PROTECTION OF RIGHTS

Article 29. Infringement of Patentee's Rights

1. Any encroachment on patentee's rights as set forth in Article 23 of the present Law shall be considered as infringement of patentee's rights and shall entail responsibility under the applicable legislation of Ukraine.

2. On the demand of the patentee, such an infringement shall be terminated while the infringer shall have the duty to compensate the patentee for damages the latter suffered.

The person who was granted a license may demand to restore infringed rights of the patentee as well, unless licensing agreement provides otherwise.

Article 30. Disputes Settled Judicially

1. Disputes relating to the application of the present Law shall be settled before the court, arbitration court or arbitration tribunal in accordance with the procedure as prescribed by the applicable legislation of Ukraine.

2. The courts, within their jurisdiction, shall deal with disputes over:

-- authorship to an invention (utility model);
-- identification of the patentee;
-- infringement of the property rights of the patentee;
-- conclusion and fulfilment of licensing agreements;
-- right of prior use;
-- inventor's remuneration;
-- compensations.

The courts shall likewise deal with other disputes relating to the protection of rights as granted by the present Law.

 

Chapter VIII. FINAL PROVISIONS

Article 31. Fees

The filing of an application and the grant of a patent, keeping it valid, extension of a patent term etc. shall be subject to the payment of fees. Schedule of fees, amounts, time limits and mode of payment shall be defined by the Cabinet of Ministers of Ukraine. Funds obtained from the collection of fees and from services provided shall be administered by the Office to the benefit of the development of State system for the protection of intellectual property. The Office shall publish annually a report on the administration of the said funds.

Article 32. Patenting an Invention (Utility Model) in Foreign States

1. Any person shall have the right to patent an invention (utility model) in foreign States.

2. The applicant, prior to filing an application for the protective document for an invention (utility model) with an authority of a foreign State, shall have the duty to file the application with the Office and shall communicate to the Office his intention of the said patenting.

Unless the prohibition thereon is imposed within three months from the date on which the Office received that communication, the application for the grant of the patent for an invention (utility model) may be filed with an authority of a foreign State.

Where appropriate, the Office may authorise the patenting of an invention (utility model) in foreign States prior to the said time limit.

3. If an invention is being patented under the Patent Cooperation Treaty, the international application shall be filed with the Office.

4. Expenses related to the patenting of an invention (utility model) in foreign States shall be born by the applicant or, upon his consent, any other person.

Article 33. State Promotion of the Creation and Use of Inventions (Utility Models)

The State shall promote the creation and use of inventions (utility models), create, for inventors and persons using them, favorable fiscal and credit environment, grant them other preferential treatment in accordance with applicable legislation of Ukraine.

 

L. KRAVCHUK
President  of Ukraine

Kiev, 15 December 1993 No. 3687-XII


RESOLUTION OF THE SUPREME RADA OF UKRAINE
ON THE ENACTMENT OF THE LAW OF UKRAINE ON THE PROTECTION OF RIGHTS FOR INVENTIONS AND UTILITY MODELS

 

       The Supreme Rada of Ukraine resolves that:

       1. The Law of Ukraine on the Protection of Rights for Inventions and Utility Models be enacted as from 1 July 1994.

       2. Pending the alignment of the legislation at the Law of Ukraine on the Protection of Rights for Inventions and Utility Models, existing acts shall apply in that part which is not contrary to that Law.

       3. It be understood that:

       the Law shall apply to legal relationship arisen after its enactment;

       USSR inventor's certificates shall be effective in Ukraine;

       inventors together with applicants may request that patents of Ukraine be granted for inventions which are protected by virtue of USSR inventor's certificates. In case of the grant of such patents respective USSR inventor's certificates shall be terminated in Ukraine. Duration of the said patents shall be 20 years from the date of filing an application for the grant of an inventor's certificate. Disputes over the grant of patents of Ukraine for inventions which are protected by virtue of USSR inventor's certificates shall be settled judicially;

       any person who, prior to the date of filing the request for the grant of a patent, of Ukraine for the invention which is protected by virtue of USSR inventor's certificate, in good faith, to the benefit of his business or establishment, had used the said invention in Ukraine or made preparations necessary to this effect, may continue to use that invention or to use it as it had been planned by the said preparations, without concluding an agreement with the patentee. In such a case inventors shall be remunerated in accordance with the procedure as prescribed for the payment of remuneration for inventions which are protected by virtue of USSR inventor's certificates;

       a USSR inventor's certificate or a patent of Ukraine for an invention may be invalidated in accordance with the procedure as prescribed by that Law whenever the invention does not fulfil conditions for protectability as prescribed in the legislation which was in effect on the filing date;

       applications for the grant of patents of Ukraine for inventions, proceedings on which are not completed on 1 July 1994, shall be processed in accordance with the procedure as prescribed by that Law. In so doing, the compliance of inventions with the conditions for patentability shall be determined in accordance with the legislation which was in effect on the filing date;

       effective patents of Ukraine for inventions granted in accordance with the legislation which was in effect prior to 1 July 1994 shall have the same legal status as patents for inventions granted in accordance with that Law;

       the Cabinet of Ministers of Ukraine may establish, under interstate agreements, procedure for the exercising of rights other than that provided for in Article 4, paragraph 2, of that Law;

       pending the establishment of an appropriate information search facility in Ukrainian language, documents with regard to obtaining patents of Ukraine may be filed in Russian;

       pending the establishment of a necessary patent information base, patents of Ukraine for inventions may be granted without carrying out essential examination of applications, for up to 5 years from the filing date under the responsibility of the patentee and without any guarantee as to the effect of the patent. Article 5, paragraph 2, of the Law of Ukraine on the Taxation of Income of Enterprises and Organizations shall not apply to inventions which were granted such patents.

       4. The Cabinet of Ministers of Ukraine:

       submit, to the Supreme Rada of Ukraine for consideration, proposals concerning amendments to, and revisions of, the legislative acts of Ukraine, which shall be made therein under the Law of Ukraine on the Protection of Rights for Inventions and Utility Models;

       bring decisions of the Government of Ukraine into the conformity with that Law;

       ensure that ministries and departments of Ukraine review and rescind their regulatory acts which are contrary to that Law;

       within its competence, publish legal acts provided for in that Law;

       ensure, prior to 1 July 1997, the establishment of the information search facility and the patent information base which are necessary for that Law to apply;

       approve interim procedure for the grant of patents of Ukraine for inventions without carrying out essential examination of applications;

       approve the procedure for the remuneration of inventors whose inventions are protected by virtue of USSR inventor's certificates;

       create a State system for the deposit of micro-organism strains.

 

I. PLJUSHCH
Chairman of the Supreme Rada of Ukraine

Kiev, 23 December 1993. No 3769 - XII

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