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Patenting

Under Ukrainian laws, non-residents should exercise their rights and powers with respect to intellectual property via patent attorneys. The patent attorneys of our Agency provide comprehensive services and legal assistance associated with the patenting of inventions, utility models and industrial designs in the territory of Ukraine.

Please contact us if you need to:

– get advice on the procedure for registration of inventions, utility models, industrial designs and its possible pitfalls; or

– get a preliminary opinion as to whether your invention, utility model or industrial design meets the registrability requirements; or

– do a patent search for an invention, a utility model or an industrial design; or

– register an invention, a utility model or an industrial design; or

– keep in force the title of protection (patent) for an invention, a utility model or an industrial design in Ukraine; or

– draft a license agreement and a rights transfer agreement for an invention, a utility model or an industrial design registered in the territory of Ukraine; or

– file an appeal against the decision related to application of an invention, a utility model or an industrial design; or

– have your interests represented at the Chamber of Appeals Chamber of the Patent Authority; or

– respond to a notice from the Patent Authority; or

– seek other services related to the patenting of inventions, utility models and industrial designs in Ukraine.

Our patent attorneys provide support in negotiations, draft and register rights assignment agreements, as well as license agreements for inventions, utility models and industrial designs in Ukraine.

The mandatory state registration of a rights assignment agreement with the State Intellectual Property Service of Ukraine is a specific feature of such deals in Ukraine. The registration of license agreements is not mandatory and is performed upon the decision of the parties to the agreement.

The terms of a rights assignment agreement require thorough elaboration. For instance, this refers to the definition of the territory. In accordance with Ukrainian laws, a patent is valid across the entire territory of our country. Therefore, it is impossible to stipulate in a rights assignment agreement that the purchaser’s rights would be limited to certain regions after the deal.

We would also like to draw your attention to another issue of great importance. It is necessary to check the current status of the patent for an industrial property item prior to its purchase in order to determine whether the patent really belongs to the seller at the time of the transfer of rights, whether the patent is still in force, whether it is being disputed in any court proceedings, and whether there are any disputes over infringement of rights. It is even more so in the case of the patent for a utility model that must be maintained valid on an annual basis, or otherwise it will expire.

No less serious approach is required for license agreements. Apart from compliance with all statutory requirements for the terms and conditions of the agreement, the determination of a royalty (payment) model and its tax treatment is an important constituent. For instance, in accordance with the laws of Ukraine, if a license agreement is entered into with a non-resident and the related payments under this agreement exceed EUR 100,000 per annum, a cost verification certificate is required to be obtained from the state information and analytical company Derzhzovnishinform. Without such certificate, payments are impossible.

On top of that, our patent attorneys provide legal services associated with the protection of intellectual property rights to an industrial design in the course of judicial, administrative and criminal proceedings. Our knowledge and expertise can assist in identifying the optimal protection method for most effective solution to the client’s problem.

Upon a thorough legal analysis of the situation, our lawyers and patent attorneys will offer you one or several procedures for the protection of your industrial property.

The fees and terms of our legal support in the protection of your industrial design will be discussed separately and will depend on the selected procedure.

For more detailed information about out services, you can directly contact our lawyers. CONTACT INFORMATION