In brief: patent prosecution in Ukraine

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent can be obtained for a product (a device, a substance, a microorganism strain, or a culture of cells of plants or animals, etc), and a process (method).

The following cannot be patented:

• plant varieties (sui generis protection is available) and animal breeds;
• essentially biological methods for the reproduction of plants and animals, as well as products obtained through such methods, as opposed to non-biological and microbiological methods and products obtained by these methods;
• topographies of integrated circuits;
• the results of industrial design;
• surgical or therapeutical methods of treatment of humans or animals, human or animal diagnostics methods;
• human germline genetic modification;
• use of human embryos for industrial or commercial purposes
• processes of altering the genetic identity of animals that may cause their suffering without any significant medical benefit to humans or animals, as well as animals bred using such processes;
• a human organism at different stages of its formation and development, as well as a mere discovery of one of its elements, in particular a gene sequence or its part;
• a product or process involving a plant or animal, the use of which is limited to a particular plant variety or animal breed; 
• a product or process related to natural biological material not separated from its natural environment, or that is not obtained by a technical process;
• discoveries, scientific theories and mathematical methods;
• gaming, competitions, auctions, exercising, intellectual activities, business activities, organisational activities, and commercial activities, methods, rules, schemes;
• computer programs;
• methods for providing information; and
• appearance or aesthetic features of a product

Software and business methods per se cannot be patented. However, if a computer program is described as a method of performing actions with material objects by means of a computer program, or a system demonstrating a connection between certain devices by means of a computer program and intended to solve a technical problem, it can, in theory, be patented. The same logic applies to business methods, namely if it can be described not only as a mental process, but also as a method involving certain material objects that solves a defined technical problem, it can be patented.

Although methods of treatment are no longer a patentable subject matter, products (substances or compositions) used in diagnostics or treatment are not exempted from patent protection.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The patent rights to an invention made by an employee belong to the employer, unless otherwise is provided for by an agreement. The employer has to decide what to do with the invention within four months after the employee informs him or her about the invention, and to sign an agreement with the employee, stipulating inter alia the amount of remuneration and the terms of its settlement. If these requirements are not met, the rights belong to the inventor (employee) or his or her assignee.

The ownership of rights to an invention created by an independent contractor, multiple inventors or a joint venture are determined by an agreement between the parties involved.

The patent owner is recorded in the letters patent and in the register of patents for inventions and utility models. To transfer the rights, the patent holder and the assignee have to sign an assignment deed and file it with the Ukrainian Patent Office. If the documents meet the requirements of the regulation on the recordation of assignments, the Ukrainian Patent and Trademark Office will publish information on the transfer of rights in the local IP bulletin and record the new patent owner in the register.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

It typically takes about two to four years to obtain a patent for invention and about one year to obtain a utility model certificate. The total cost (official fees and average service fees included) to prosecute an application with one independent claim, 10 claims in total and 15 pages of specifications and claims (additional independent and dependent claims and additional pages will involve extra fees) ranges from €1,500 to €2,500 for an invention and about €950 to €1,500 for a utility model. Translation costs are not included in this estimate.

Are there any procedures to expedite patent prosecution?

The Patent Prosecution Highway is not available in Ukraine. However, it is possible to expedite substantive examination, which is subject to additional official fees in the amount of €332 for one independent claim and €270 for every subsequent independent claim (the regular fee is €183 for each independent claim). In this case, the examination process takes about three months.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The requirements for patent specifications are set forth in the Rules on Application Drafting which provide general guidelines on the disclosure of each particular subject matter (substance, method, device, etc).

Must an inventor disclose prior art to the patent office examiner?

There is no such requirement.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It can be done by filing divisional applications before a positive examination result is granted to a parent application or by filing applications to claim priority from the earliest filed application. The later applications should be filed within 12 months from filing date of the first application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

An adverse decision of the Patent Office at the stage of examination can be appealed before the Board of Appeals within two months as of the date of its issuance. An adverse decision of the Board of Appeals can be further challenged before a court.

Does the patent office provide any mechanism for opposing the grant of a patent?

It is possible to file a pre-grant opposition against a patent application within six months following its publication. The current law also provides for a possibility of raising arguments on patentability issues, without paying the fee and without a specific deadline. Both procedures are still to be specified in relevant regulations expected in the near future.

A post-grant opposition in respect of a patent for an invention can be filed within nine months following the publication of the mention of grant.

Pre-grant oppositions are reviewed by the examiner in charge of the application, while post-grant oppositions are brought before the Board of Appeals.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Under the patent law, if several inventors independently created the same invention or utility model, the right to a patent belongs to the applicant whose application has the earliest filing date, or if priority is claimed, the earliest priority date, unless this application is considered or has been withdrawn, or a refusal to grant a patent has been issued for this application. Priority disputes are to be resolved in courts.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

After the patent is granted, it is possible to file a request with the Ukrainian Patent and Trademark Office to correct any mistakes in the specification and claims. A patentee can also file a request to limit the scope of the invention by deleting independent claims or independent claims with the respective dependent claims, or by amending features of independent claims, provided that these amendments narrow the scope of protection, or by introducing features from corresponding dependent claims in the independent claim.

A patent owner can surrender its rights to a patent in full or in part by filing a notice with the Patent and Trademark Office. The surrender becomes effective on the date of the publication of the notice in the official bulletin. Otherwise, a patent can be revoked if the patent owner fails to pay patent annuities on time. In that case, the patent is deemed to be revoked as of the first day of the year for which the annuity was not paid. The grace period for late payment of annuities is within 12 months of the expiration of the deadline.

The court does not amend patent claims during a lawsuit. If the patent owner wishes to amend the claims by reducing the scope of protection, it must file a request with the Patent and Trademark Office. At the same time, during invalidation proceedings, a court may rule on full or partial patent invalidation. If the patent owner files for a claim amendment that limits the scope of protection in the course of a pending invalidation proceeding, this may terminate the proceedings because the limitation can remove the ground for the claim.

There is no re-examination procedure for granted patents in Ukraine.

How is the duration of patent protection determined?

Patent rights take effect on the day following the patent registration date (which is also the date of publication of the granted patent in the local IP bulletin) and last until the expiration of the 20-year period starting from the application filing date. The term of patents related to pharmaceuticals and agrochemicals that require a marketing authorisation may be extended by up to five years.

Provisional (temporary) protection is effective from the date of publication of a patent application in the local IP bulletin and expires when the patent is granted.

Law stated date

Give the date on which the information above is accurate.

11 March 2021.