Ukrainian Patents and Utility Models | General Overview

How Do I Register a Patent (Utility Model) in Ukraine with Destra Patent Law Firm (Steps, Costs)?

Drafting and filing a patent (utility model) application involves at least 8 stages of meticulous work aimed at shaping the scope of protection of the invention based on the customer’s targets.

Step 1. Confidentiality Agreement

Any information on patentable subject matter, applicant and inventor is confidential. Part of this information (namely, which is eventually included into the application) remains confidential until the patent (utility model) application is published. All other information (which was disclosed by the customer while drafting the application but eventually not included in the application) remains confidential even after the application has been published.

The DPL’s confidentiality obligations are set forth in the Confidentiality Agreement to be signed by DPL prior to getting started with receiving information from the customer and drafting the patent application.

Having signed the confidentiality agreement, DPL proceeds to the following steps.

Step 2. Invention Disclosure Form

We usually provide the customer with an invention disclosure form (questionnaire) to assist the applicant (inventor) in collecting their thoughts regarding the matter.

At this step, the customer provides us with the following information:

• Applicant Details — the information about the person(s) to be designated as the applicant(s) who will eventually be the patent owner(s) after the registration process is completed.
• Inventor Details — the information about the person(s) who will be designated as the inventor(s) in the patent application.
• Invention Details — the information disclosing how the invention works, what problem it seeks to solve, and why is it better than other products/processes.

Options for designating the Applicant (future patent owner):

• An individual or a legal entity.
• One or more individuals/entities.

Rules to follow when designating the Applicant (future patent owner)

The following persons should be designated as the Applicant:

• Inventor — if the invention was created independently by the inventor (not as an employee), or, if as an employee, where the employer refuses to patent;
• Employer — if there is an agreement on allocation of rights to the invention between the inventor and his/her employer, and the right to file the application has been assigned by the employee to the employer;
• Both Inventor and Enployer — if there is no agreement on allocation of rights to the invention between the inventor and his/her employer. If there is no such a contract – should the inventor be not designated as the applicant – the inventor may file a claim to invalidate the patent on the ground of infringement of his/her rights.

Rules to follow when designating the Inventor

The person (group of persons) who actually invented a product/process as a result of their intellectual and creative activities should be designated in the patent application as the inventors. People who were involved in organizational work or financing should not be considered inventors.

Inappropriate designation of the applicants and inventors does not affect the grant of a patent because Ukrpatent (like patent offices of any other countries) does not verify such information, but this can have negative consequences if an aggrieved person files a claim to invalidate the patent.

Having received the above information from the customer, we discuss the options respecting the designation of the applicant and inventor.

Invention details are more complex and time-consuming. These are analyzed by us and discussed with the customer at the following step.

Step 3. Identifying Patentable Subject Matter, Drawing up the Requirements Specification

Time to completion:

We analyze the invention details, disclosed by the customer, within 5 working days. Where needed, we draft clarification questions and analyze new answers. Once invention details are sufficiently disclosed so that we can perform the patent search and draw up the patent application, we sign the Patent Application Requirements Specification, and go on to the following steps.

Step 4. Patentability Search

Purpose:

• Determination of novelty and inventive step (for a patent), or novelty only (for a utility model).
• identification of the closest analogue to the claimed invention (prototype) to be referred to in the description.

We usually get started with the patentability search concurrently with Step 3 (once the volume of information received about the invention is sufficient for us to classify the invention under the current IPC version and conduct the patentability search). The patentability search is performed within 5 working days. The search results are analyzed and the opinion is drawn up within 5 working days after the search.

Step 5. Drafting a Patent (Utility Model) Application

Drafting a patent (utility model application) takes 35 working days on avarage. The exact term is to be agreed when discussing and signing the Requirements Specification, and depends on complexity of the invention and sufficiency of information disclosed by the applicant.

Step 6. Filing the Patent (Utility Model) Application. Formal Examination

We file application materials within 2 days after they are approved by the customer.

A Utility Model application undergoes formal examination only (Step 7 is not applicable), while a Patent application undergoes both formal examination (this Step 6) and substantive examination (the next Step 7).

Non-accelerated formal examination takes up to 8 months for the utility model, and up to 17 months for the patent.

Where accelerated formal examination is ordered, it takes up to 20 working days.

Step 7. Substantive Examination (for Patent Applications)

Time to completion:

This Step 7 is only applicable to Patent Applications (Utility Model Applications undergo formal examination only).

Non-accelerated substantive examination is takes up to 15 months.

Where accelerated substantive examination is ordered, it takes up to 80 working days.

Step 8. Patent (Utility Model) Grant

Time to completion:

The publication fee is to be paid within 3 months following the positive Examiner's decision.

The patent (utility model) is granted within 2 months following the publication (registration).

Patent and Utility Model Consultations

We provide consultations on matters related to the protection of patents and utility models in Ukraine and worldwide, as well as written materials explaining the stages and cost of patenting.

Free of charge:

• The first 15 minutes of an oral consultation on patents and utility models;
• Standard written materials on stages and costs of patenting.

In most cases, free consultations and basic written materials are enough to decide and start working with us.

Send a request for a free consultation

Send a request for a free consultation