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.
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
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
