Ukrainian Patent Q&A

Can Ukrainian patents cover any type of invention, including software, business methods and medical procedures?

• Products (devices, substances, microbial strains, plant or animal cell cultures, etc.) and processes (methods) can be patented.
• The following contents cannot be patented:
  • Plant varieties (which may be protected on their own terms) and animal breeds;
  • biological methods for the reproduction of plants and animals and the products obtained by such methods, as opposed to abiotic and microbiological methods and the products obtained by them;
  • IC topography;
  • Industrial design achievements;
  • surgical or therapeutic methods for humans or animals, and diagnostic methods for humans or animals;
  • human germline genetic modification;
  • Use of human embryos for industrial or commercial purposes;
  • Processes that alter the genetic characteristics of animals that may cause suffering to the animals but do not provide any significant medical benefit to humans or animals, and animals raised using such processes;
  • the human organism at various stages of its formation and development, and the mere discovery of one of its component parts, in particular a genetic sequence or part thereof;
  • Products or processes involving plants or animals, the use of which is restricted to specific plant varieties or animal species;
  • Products or processes involving natural biological material which has not been isolated from its natural environment and has not been obtained by a technological process;
  • discoveries, scientific theories, and mathematical methods;
  • Games, contests, auctions, exercises, intellectual activities, business activities, organizational activities, commercial activities, methods, rules and schemes;
  • Computer programs;
  • the method of providing information;
  • Appearance: The appearance or aesthetic features of a product
• Software and business methods themselves cannot be patented, but if a computer program is described as a method of performing actions on physical objects through a computer program, or a system that demonstrates the connection between certain devices through a computer program and is intended to solve a technical problem, then it can theoretically be patented. The same logic applies to business methods, if it can be described not only as a mental process, but also as a method involving certain material objects that can solve a certain technical problem, then it can be patented.
• While methods of treatment are not patentable, products (substances or compositions) used for diagnosis or treatment may be patentable.

Who owns patents for inventions by company employees, independent contractors, multiple inventors, or joint ventures? How is patent ownership formally recorded and transferred?

• The patent right of the invention of the employee belongs to the employer, unless otherwise stipulated in the agreement. The employer must decide how to deal with the invention within 4 months of the employee notifying him of the invention and sign an agreement with the employee to stipulate the amount of remuneration and the conditions of handling, etc. If these requirements are not met, the right belongs to the inventor (employee) or his assignee.
• Ownership of rights to inventions created by independent contractors, multiple inventors, or joint ventures is determined by agreement between the parties involved.
• The patent owner is recorded in the patent book and the register of invention and utility model patents. In order to transfer the rights, the patent owner and the assignee must sign a transfer deed and submit it to the Ukrainian State Service for Intellectual Property and Innovation (UANIPIO). If the document meets the requirements of the transfer registration regulations, the Institute will publish information about the transfer of rights in the local Intellectual Property Gazette and record the new patent owner in the register.

How long does it usually take to get a patent granted and how much does it usually cost?

• The average authorization time for invention patents in Ukraine is 2-4 years, and the authorization time for utility model patents is about 1 year.
• The total cost of a patent application, including official fees and average service fees, is approximately EUR 2020 - EUR 3,000 for one invention, one independent claim, 10 claims in total and 15 pages of description and claims (additional independent and dependent claims and additional pages involve additional fees) and approximately EUR 1,460 to EUR 1,800 for a utility model. (Translation fees are not included)

Is there any expedited procedure for patent application?

• The Patent Prosecution Highway (PPH) is not available in Ukraine. Starting from 2023, it will also not be possible to expedite substantive examination by filing a relevant request.

What must be disclosed or described about the invention in a patent application? Are there any specific guidelines to follow or pitfalls to avoid when deciding what to include in an application?

• The requirements for patent specifications are set out in the Guidelines for Patent Applications in Ukraine, which provide general guidance on the disclosure of each specific subject matter (e.g., substance, method, device, etc.).

Must inventors disclose prior art to patent examiners?

• There is no such requirement.

Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• This can be achieved by filing a divisional application before the parent application obtains a positive examination result or by filing an application to claim priority from the earliest filed application. Subsequent applications should be filed within 12 months from the date of filing of the first application.

Is it possible to appeal an adverse decision of the Patent Office to the courts?

• An unfavorable decision of the Ukrainian State Service for Intellectual Property and Innovation (UANIPIO) during the examination stage can be appealed to the UANIPIO Appeal Board within two months from the date of the decision. An unfavorable decision of the Appeal Board can be further challenged in court.

Does the Ukrainian Patent Office provide a mechanism for opposing the granting of a patent?

• Anyone may file a pre-grant opposition to a patent application within six months of its publication. The current law also provides that patentability issues may be argued without paying a fee and without a specific deadline.
• A post-grant objection to an invention patent can be raised within 9 months after the publication of the grant announcement.
• Pre-grant opposition requests are reviewed by the examiner in charge of the application, while post-grant oppositions are submitted to the Appeal Board.

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

• According to the Ukrainian Patent Law, if several inventors independently complete the same invention or utility model, the patent right belongs to the applicant with the earliest application date, or if a priority claim is claimed, to the applicant with the earliest application date, unless the application is examined, withdrawn or rejected. Priority disputes should be resolved in court.

Does the Ukrainian Patent Office provide for procedures for amendment, review or revocation of patents? Can the court amend patent claims during litigation?

• After a patent is granted, a request for correction of errors can be filed with UANIPIO to correct any errors in the description and claims. The patent owner can also file a request to limit the scope of the invention in the following ways:
  • Deletion of independent claims or deletion of independent claims with respective dependent claims;
  • modify the features of the independent claim, provided that such modifications reduce the scope of protection; or
  • The features of the respective dependent claims are introduced in the independent claim.
• The patent owner may renounce all or part of his patent rights by filing a notification with UANIPIO. The renunciation takes effect from the date of publication of the notification in the Official Gazette, otherwise the patent will become invalid if the patent owner fails to pay the patent annuity on time. In this case, the patent is deemed to be withdrawn from the first day of the year in which the annuity was not paid. The grace period for late payment of the annuity is 12 months from the expiration of the deadline.
• The court does not allow amendments to patent claims during the litigation. If the patentee wishes to amend the claims by narrowing the scope of protection, he must file a request with the Ukrainian Patent Office. At the same time, in the invalidation proceedings, the court may rule that all or part of the patent is invalid. If the patentee proposes amendments to the claims that limit the scope of protection during the pending invalidation proceedings, the proceedings may be terminated, as such a limitation eliminates the basis for the claims.
• In Ukraine, there is no review procedure for granted patents.