Ukrainian legislation provides for an institute of specially certified specialists in the field of intellectual property, the specific terminology for whom is "Intellectual Property Representative" or "Patent Attorney". Whereas, those who are not recorded in the National Register of Intellectual Property Representatives (Patent Attorneys) are prohibited from calling themselves "Patent Attorneys." Patent Attorneys of Ukraine may only be natural persons who can represent both foreign parties (natural persons or corporate entities) and stateless persons, as well as Ukrainian natural persons and corporate entities.
Let's take a look at who Patent Attorneys are, what functions they perform, and how they differ from other specialists in the field of intellectual property.
Since long ago in various countries there have been rules for relations between foreign parties (non-residents) and national intellectual property authorities of those countries. They provide for the mandatory implementation of such relations by specially authorised (licensed) intellectual property representatives. In some countries, there is also mandatory judicial protection of the intellectual property rights of foreign parties (non-residents) by special individual representatives who are specialists in the field of intellectual property.
These intellectual property representatives usually provide a service in a specific specialisation or in several specialisations: from the submission of applications to the national intellectual property authority for the acquisition of intellectual property rights on particular objects of intellectual property law, participation in examination procedures, to the provision of legal services and representation at courts regarding dispute resolution and protection of intellectual property rights.
In order to acquire the status of such an intellectual property representative, it is usually required to have an appropriate education, appropriate prior work experience, and successful certification by having passed exams in certain subjects in accordance with the person's future specialisation. The specified requirements for acquiring such a status of representative depend on the person's future specialisation.
Depending on the above-mentioned specialisation of service, different terminology is used to describe intellectual property representatives in different countries. They may be called "Patent Attorneys" (Patent Attorneys), "Patent Agents" (Patent Agents) or "Patent Lawyers" (Patent Lawyers), "Registered Patent Attorneys" (Registered Patent Attorneys) or "Registered Patent Agents" (Registered Patent Agents), "Chartered Patent Attorneys" (Chartered Patent Attorne"Patent Agents"ys) or "Chartered Patent Agents" (Chartered Patent Agents), "Benrishi" (Japan), "Patent and Trademark Attorneys" (Patent and Trademark Attorneys), "Trademark Attorneys" (Trademark Attorneys), "Trade Mark Attorneys" (Trade Mark Attorneys) или "Trade Mark Agents, or Trademark Agents" (Trademark Agents, Trademark Agents).In some countries, the functions of these intellectual property representatives can be performed by ordinary lawyers who have the appropriate additional education or have passed special additional exams (Advocates, Attorneys-at-Law, Bengoshi (Japan)).
As has already been mentioned above, in accordance with the legislation of Ukraine, an intellectual property representative specially certified by the state is literally called an "Intellectual property representative". Along with this name, the legislation provides for a shorter, more convenient name, which is equivalent and does not depend on the specialisation of the service - "Patent Attorney".
In accordance with the current legislation of Ukraine, Patent Attorneys can represent both foreign parties and stateless persons, as well as any Ukrainian natural person and corporate entity.
Herewith, the Laws of Ukraine "On the protection of rights on inventions and utility models", "On the protection of rights on industrial designs", "On the protection of rights on the layouts of semiconductor products", and "On the protection of rights on marks for goods and services" provide for the implementation of the rights of foreign parties (natural persons or corporate entities) and stateless persons in relations with the Ukrainian intellectual property authority exclusivelyby state-registered special representatives.
The status of Patent Attorney of Ukraine is acquired as a result of state certification according to a specific specialisation of work. Namely, a candidate for Patent Attorney chooses a certain specialisation and passes certification according to it.
Such specialisations are:
- Inventions (Patents) and Utility Models;
- Industrial Designs;
- Layout of Semiconductor Products (Layout Designs (Topographies) of Integrated Circuits);
- Trademarks (marks for goods and services);
- Geographical Indications (indication of the origin of goods);
- Legal Services in Intellectual Property Matters.
In addition to the above-described Intellectual Property Representatives, who are simultaneously called Patent Attorneys, the legislation of Ukraine provides for Intellectual Property Representatives of Plant Varieties,who are not called Patent Attorneys, but also pass state certification and receive a corresponding certificate.
According to current legislation, a Patent Attorney of Ukraine must:
- be a Ukrainian citizen;
- have permanent residence on the territory of Ukraine;
- hold a university degree;
- hold an LLM in intellectual property;
- have practised for at least five years in the field of intellectual property;
- have successfully completed qualification examinations in accordance with the declared specialisations of work, have passed attestation, have had their information entered into the State Register of Intellectual Property Representatives (Patent Attorneys), have a registration number assigned and have obtained a certificate showing that they are a Patent Attorney of Ukraine.
State attestation of Patent Attorneys in Ukraine is conducted once a year. Before attestation, Patent Attorney candidates undergo special training courses on the work of Patent Attorneys in accordance with the chosen specialisations of future work. Attestation of Patent Attorneys of Ukraine involves passing qualifying exams according to the specialisations of work declared by the candidate for Patent Attorney. Qualifying examinations include tests, solving situational tasks and interviews.
Information about Patent Attorneys entered into the State Register of Intellectual Property Representatives (Patent Attorneys) is published in the official "Industrial Property" bulletin.
According to current legislation, persons who are not entered in the State Register of Intellectual Property Representatives (Patent Attorneys) cannot call themselves "Patent Attorneys."
Taking into account the above-mentioned information, it can be concluded that in order to obtain a certificate of a Patent Attorney in all specialisations and to be able to provide clients with a comprehensive range of services in the field of intellectual property, a Patent Attorney must have completed higher education in the field of natural sciences, must have also completed higher education in law, and also higher education in the field of intellectual property.
The main (but by far not the only) work that a Patent Attorney performs is the representation of any natural person or corporate entity at the National Intellectual Property Office (NIPO) or at the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation, with the aim of acquiring intellectual property rights for the specified parties. Namely, this regards the representation of applicants applying for state registration or patenting of intellectual property objects.
As known, the procedure for considering specified applications for any object of intellectual property is a competitive process. The examination by the national intellectual property authority is done to identify inconsistencies with certain requirements of current legislation. At the same time, the examination determines the reasons for possible refusal to grant legal protection for the declared object. In addition, the task of the Patent Attorney as a representative of the applicant is to defend and preserve the declared scope of protection of the object of intellectual property or to change such scope in maximum compliance with the interests of the applicant. Usually, applicants initially entrust Patent Attorneys who have the appropriate specialisation with the preparation of such applications in order to avoid the above-mentioned problems in the process of examination of applications, to prevent ultimate loss of the option of patenting, and to obtain the most relevant scope of legal protection of intellectual property objects.
The professionalism of a Patent Attorney in the process of filing such applications lies in the fact that they can initially identify the most relevant intellectual property objects for registration or patenting and can outline their future scope of legal protection in the most optimal way. At the same time, the Patent Attorney proceeds based on the feasible intentions, needs and circumstances of the client and accordingly determines the optimal method of acquiring legal protection, and he/she defines the limits and forms the scope of the necessary legal protection. In particular, this applies not only to inventions, utility models, and industrial designs, but also to trademarks and even works (objects of copyright). When making a decision regarding registration or patenting and filing an application for a specific object of intellectual property, the Patent Attorney takes into account the following circumstances:
- the possibility of achieving the maximum breadth of scope of protection and probable risks of avoidance of use of the facility by other persons; li>
- the feasibility, physical and financial resources required to prove an instance of illegal use of such an object;
- compliance of the object with the conditions for providing legal protection;
- probable risks of refusal of state registration or patenting of such an object;
- probable risks of further appeal of registration or patenting;
- the degree of competitive advantages when using such an object;
- the possibility of obtaining similar protection in other countries;
- cost and possibility of optimising the expenses related to registration or patenting;
- the possibility of contractual settlement of relations between parties related to the creation and further use of the object of intellectual property;
- possibilities and types of commercialisation of the object.
A Patent Attorney has the right to carry out his/her work individually or together with other Patent Attorneys, he/she may establish patent agencies, firms, bureaus or offices, etc. with the rights of a corporate entity, and may also work as a person employed by a corporate entity.
A Patent Attorney acts within the mandate of the person whom they represent, in the form of civil representation, which is carried out on the basis of a mandate agreement. A written power of attorney with a specific list of powers of the Patent Attorney must be used for the representation of the principal by the Patent Attorney at the National Intellectual Property Office (NIPO) or at the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation. Herewith, parties represented by the Patent Attorney are not required to provide a notarial certification of the powers of attorney.
In the process of representation at the National Intellectual Property Office (NIPO) or at the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation, a Patent Attorney of Ukraine (in accordance with the powers specified in the power of attorney), in particular, may:
- sign and submit applications and application materials regarding the acquisition of intellectual property rights or their corresponding state registration;
- conduct correspondence related to record-keeping for the specified applications;
- make corrections to the materials of such applications and the corresponding information entered in state registers;
- stop paperwork for these applications;
- submit any statements, petitions, objections and letters, including such regarding the extension and termination of the validity period of protective documents;
- submit any statements, requests, objections and letters related to procedure for acquiring intellectual property rights and the conducting of such rights by other parties who are not clients of the Patent Attorney;
- receive any documents, including protective documents;
- submit applications and requests related to the transfer and termination of rights concerning the above-mentioned applications related to the state registration of contracts regarding the disposal of property rights of intellectual property or with the protection of intellectual property rights;
- conclude contracts on services related to procedures of state registration, acquisition and conducting of intellectual property rights, and make payments under such contracts;
- pay fees and state duties related to the protection of intellectual property rights;
- obtain relevant certificates from banking institutions regarding the payment of state duties or fees related to the protection of rights to intellectual property objects.
A Patent Attorney may also monitor deadlines and pay periodic official fees for maintaining the validity of protective documents (patents, certificates) on behalf of the person represented. Patent Attorneys may carry out procedures for making changes to state registers of intellectual property right objects, and also procedures for state registration of agreements on the disposal of intellectual property rights. Likewise, Patent Attorneys may also monitor possible violations of intellectual property rights of persons whom they represent.
In the process of their professional work, Patent Attorneys may carry out research, patent information searches and patent research. This includes carrying out research aimed at identifying objects with intellectual property rights, determining compliance with the conditions for granting legal protection, the possibility and expediency of acquiring rights regarding these objects, comparing such objects, establishing the facts of their use, and violation of intellectual property rights.
Patent Attorneys may provide legal consultations and services for the development of draft agreements on the use and disposal of intellectual property rights. This applies to agreements on the transfer (alienation) of exclusive intellectual property rights, licenses (permits) on the use of intellectual property objects, license agreements and commercial concession (franchising) agreements. In addition, such services may relate to issues of distribution of property rights of intellectual property between co-owners or future co-owners of property rights, settlement of relations between creators of intellectual property objects and their employers or customers of works that anticipate the creation of intellectual property objects.
In accordance with current legislation, in addition to representing the interests of any person at the National Intellectual Property Office (NIPO) or at the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation, a Patent Attorney may represent the interests of any person at courts and credit institutions and before any other physical persons or legal entities, and before government authorities, in particular law enforcement, customs and antimonopoly authorities.
Considering the fact that Patent Attorneys have completed higher education in the field of intellectual property, they can provide all of the above services concerning all other objects of intellectual property law, including regarding works (copyright objects), in relation to state registration of copyright and contracts related to the copyright of the work.
According to current legislation, Patent Attorneys of Ukraine are obligated to keep the information they obtain confidential. That applies to information obtained in the process of performing their professional duties, in particular, the nature of the issues for which the Patent Attorney was contacted, the content of consultations, explanations, advice provided, and so on. Patent Attorneys may determine the procedure for circulation of information that is the subject of their professional, business or other interests, including whether such information is classified as confidential, and establish a system of protection for such information.
A Patent Attorney is obligated to refuse or stop providing services if they could be used in a case in which he/she has already represented or advised another person with opposing interests and the conflict has not been resolved. Namely, the current legislation requires that a Patent Attorney avoids conflict of interest. In addition, legislation provides that the Patent Attorney must have a personal seal indicating their name and registration number.
As you can see, a Patent Attorney has significant advantages compared to ordinary uncertified patent experts or lawyers (attorneys) who specialise in the field of intellectual property:
- a Patent Attorney is guaranteed to have at least two higher education degrees, one of which is in the field of intellectual property;
- a Patent Attorney is guaranteed to have at least five years of practical work experience in the field of intellectual property protection;
- the theoretical knowledge and practical experience of a Patent Attorney are confirmed by a special state certification;
- only a Patent Attorney has the exclusive right to represent foreign parties and stateless persons in relations with the National Intellectual Property Office (NIPO) or with the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation regarding the above-mentioned issues;
- a Patent Attorney has the officially confirmed status of a specialist who can make official conclusions based on the results of research on intellectual property rights of objects, and can carry out patent research with the registration of their results in the form of conclusions and patent forms in the manner prescribed by the state standards of Ukraine.
When looking for help in issues related to intellectual property, a person should pay attention not to the reputation of the company where a Patent Attorney works, but to the Patent Attorney himself/herself. This applies in particular with regard to the patenting or registration of intellectual property objects (for example, inventions, utility models, industrial designs and trademarks), disposal of intellectual property rights, protection of such rights, etc. When choosing and assigning a Patent Attorney of Ukraine, in order to understand their qualifications and powers, as well as the authority of their representation, you have to find out which specialisations of activity they have received a state certification for. Also, depending on the type of services to be provided, it's worth looking for a Patent Attorney who has completed higher education in the natural sciences and/or law.
In relations with the National Intellectual Property Office (NIPO) or with the "Ukrainian National Office of Intellectual Property and Innovation" (UNOIPI) State Organisation, foreign parties and stateless persons may exercise their rights exclusively with the help of Patent Attorneys of Ukraine who have a state attestation in the relevant specialisation of activity concerning certain intellectual property rights for objects stated above. For example, that means that the interests of foreign parties in matters of patenting an invention cannot be represented by a Patent Attorney who does not have a certification in the specialisation of "inventions and utility models".
As has already been mentioned above, in order to obtain certification as a Patent Attorney in all of the prescribed specialisations and to ensure that they can provide clients with a comprehensive range of services in the field of intellectual property it is desirable for a Patent Attorney to have completed higher education in the field of natural sciences and also in law, in addition to having completed higher education in the field of intellectual property. That's why the head of the "Destra" Patent and Legal Agency, who is a Patent Attorney of Ukraine, certified in all of the specialisations mentioned above, has master's degrees in electronics, law and intellectual property.