Maksym Koval, Esq.
Overall, Ukraine’s IP system provides a solid foundation for the protection and enforcement of intellectual property rights, which is crucial for fostering innovation, attracting foreign investment and supporting economic growth. The legal framework offers straightforward and transparent procedures for registering and enforcing IP rights in-country or abroad.
Ukraine’s IP framework is historically comprehensive, encompassing a range of rights, including patents, trademarks, copyrights, industrial designs, and geographical indications. The country has made significant strides in aligning its IP laws with international standards, adhering to agreements such as the Paris Convention for the Protection of Industrial Property (adopted back in 1883), the Berne Convention for the Protection of Literary and Artistic Works (1886), and the TRIPS (“Trade-Related Aspects of Intellectual Property Rights”) Agreement under the World Trade Organization, which allows member countries to freely determine the methods for implementation in their respective countries’ legal systems and practice.
In recent years, Ukraine has undertaken numerous reforms to improve its IP system to the level of international standards. These reforms have been driven by the need to integrate more fully into the global economy, protect the interests of IP rights holders and create a favorable environment for business and innovation.
Below we review the recent reforms in Ukrainian property legislation and exemptions during the martial law.
1.Recent Reforms and Institutional Developments
As previously stated, the strategic goal of IP reform is to align Ukraine’s IP laws and enforcement mechanisms with EU and global standards, fostering a more reliable IP environment for businesses and innovators. These reforms are part of a broader initiative outlined in the Sustainable Development Strategy “Ukraine 2020” and the “Concept for Reforming the State System of Legal Protection of Intellectual Property in Ukraine.” The launching of the Higher Court on Intellectual Property, which remains a highly anticipated reform, is expected to further enhance IP rights protection in Ukraine.
On June 16, 2020, the Ukrainian Parliament passed Law No. 703-IX “On Amendments to Certain Laws of Ukraine Regarding the Creation of the National Intellectual Property Authority” (the “Law”). This legislation marked a significant step in the modernization of Ukraine’s intellectual property system, with the goal of aligning it more closely with European Union standards. On July 14, 2020, the Law was published, signaling the completion of long-anticipated institutional reforms in Ukraine’s IP sector.
As part of this reform, the National Intellectual Property Authority (“NIPA”) was established, replacing the State Enterprise “Ukrainian Institute of Intellectual Property” (“Ukrpatent”) and assuming certain functions previously held by the Ministry of Economic Development, Trade and Agriculture. NIPA now serves as the central authority responsible for overseeing the legal protection of intellectual property in Ukraine. This restructuring was designed to streamline the IP registration process, enhance transparency, and increase the efficiency of IP enforcement in the country.
2.The Role and Responsibilities of National Intellectual Property Authority
NIPA was created by consolidating Ukrpatent and other state organizations within the intellectual property sector, making it the key institution for IP protection in Ukraine. Operating under the oversight of the Cabinet of Ministers, NIPA is tasked with several crucial functions:
• conducting examinations of applications for the registration of intellectual property objects;
• carrying out state registration of IP objects and issuing patents and certificates;
• invalidating, either partially or fully, the rights to certain types of registered IP objects;
• publishing official information, maintaining registries, and issuing certificates and extracts from the state register about protected IP objects.
NIPA also includes specialized bodies such as the Appeals Chamber, which handles objections to decisions made by NIPA regarding the acquisition of IP rights, and the Attestation and Appeals Commission, which addresses matters related to the certification of patent attorneys.
These reforms are expected to simplify and expedite the IP registration process in Ukraine, while posing greater clarity and efficiency. However, businesses and IP rights holders should anticipate certain challenges and potential uncertainties during transitional periods, as the new authority may not yet be fully operational.
3.Impact of War on Intellectual Property Rights
On February 24, 2022, Russia launched a full-scale war against Ukraine, which had profound implications for the country, including its intellectual property landscape. In response to the ongoing conflict, on April 13, 2022, Law No. 2174-IX “On the Protection of Interests in the Field of Intellectual Property During Martial Law Introduced Due to the Armed Aggression of the Russian Federation against Ukraine” came into effect. This law provides critical guidelines on how intellectual property rights are managed during martial law.
a.Extension of Intellectual Property Protection Terms
Under the aforementioned law, running deadlines related to the protection of intellectual property rights are suspended for the duration of martial law. If the protection term for IP objects (e.g., patents, trademarks) expires from February 24, 2022 and throughout the duration of martial law, necessary actions may be taken to extend the validity of protection documents (certificates, patents) within 90 days after martial law is lifted without the need to pay additional fees for missing original deadlines.
The same rule applies to any other deadlines, such as responses to NIPA actions, deadlines for filing additional documents, and so forth. In other words, during the entirety of martial law, all relevant IP rights remain in force and can be renewed under the general procedure after martial law is canceled.
b.Suspension of Deadlines During Martial Law
The law also specifies that the following deadlines are suspended for the duration of martial law:
• Deadlines related to the protection of IP rights;
• Deadlines for acquiring rights to IP objects;
• Deadlines for filing objections against applications or international registrations in Ukraine;
• Deadlines for appealing decisions of NIPA in court or to the Appeals Chamber to invalidate IP rights;
• Deadlines within which missed deadlines can be reinstated (excluding those set for actions by NIPA).
These deadlines resume on the day following the officially declared termination of martial law, taking into account the time elapsed before suspension of the above deadlines. Furthermore, all necessary applications, petitions, objections and responses required by relevant IP laws can be submitted within 90 days after the end of martial law without the need to pay additional fees for renewals, extensions or deadline extensions.
4.Publication of Information Concerning Defense or Dual-use Technologies
Under the Law, NIPO does not publish information related to military and dual-use products during the period of martial law, for obvious reasons. This measure aims to protect national security interests by restricting access to potentially sensitive technological information that could be misused by adversaries. Consequently, data concerning inventions or utility models that have applications in defense or dual-use technologies remain confidential, minimizing the risk of exposure during the ongoing conflict.
In conclusion, despite the challenges posed by the ongoing conflict, IP legal reforms demonstrate Ukraine’s commitment to upholding and advancing its intellectual property system. The establishment of NIPA, along with the strategic alignment of Ukraine’s IP laws with EU and global standards and the introduction of emergency measures during martial law, reflect the country’s dedication to creating a secure and effective IP environment for all interested parties.
