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1. What is Invention or Utility Model?
An invention (utility model) is the result of human intellectual activity in any field of technology that meets the criteria for patentability.
You can patent a product, a process, or the new application of a known product or process as an invention or utility model.
Examples of a product as a technological object include:
A device, a mechanism, a complex of interacting devices, a structure, an article, a substance, a strain of microorganism, a culture of plant or animal cells, and other biological material.
Examples of a process as a technological object include:
Manufacturing, treatment, processing of a product and quality control, conversion of substance, energy, or data, parameter measurement, diagnostics, treatment, or management of a process that is a technological object.
An Invention meets the patentability criteria if it is:
- new;
- Possesses an inventive step; and
- Is industrially applicable.
A Utility Model meets the patentability criteria if it is:
- new; and
- Is industrially applicable.
Exclusive property rights to an invention (utility model) arise and are protected by the state only upon registration (issuance of a patent). Without registration, no protection exists for the invention. Rights to an invention (utility model) are protected only in the country where the patent is issued.
Therefore, patenting must occur in the country (or countries) where protection is desired.
2. What is a Patent for an Invention or Utility Model?
A patent offers the opportunity to generate revenue, attract investment, conquer a new market, and optimize taxation.
The patent is issued by the specially authorized state body in the field of intellectual property—the patent office. In Ukraine, this is the National Intellectual Property Authority (formerly known as Ukrpatent).
A Patent is the object of desire and pride of any inventor, it is an opportunity to earn, invest, conquer a new market, and optimize taxation.
A challenge, however, is that the patent itself does not specify its strength—whether it is a "strong" or "weak" patent. Patent holders often discover the patent's true strength only when they must defend their rights in case of infringement or when faced with a claim.
Our primary objective when providing patenting services is to obtain a truly strong patent for the Client, ensuring the maximum scope of intellectual property rights protection.
3. Why Patent Inventions and Utility Models?
1. Obtain a Market Monopoly — This provides the exclusive right to manufacture the product or carry out the method (e.g., method of cooking, manufacturing, treatment, data processing), removing competitors by gaining the exclusive right to use, the right to prohibit use, and the right to permit use (selling a license).
2. Avoid Issues if a Similar Solution is Patented by Another Party — Competitors might be developing solutions in the same field, and one party could obtain a broad patent covering many areas.
3. Enterprise Capitalization — Increasing the company's value by assessing the asset and placing it on the balance sheet.
4. Opportunity for Inventor Remuneration — The inventor can receive a bonus from the employer or grant a license for the use of the patent and receive remuneration in the form of royalties.
5. Reputational Benefits, Popularity, Satisfaction of Intangible Needs — An individual may obtain a patent for inclusion in a dissertation, résumé, or portfolio; a legal entity can use the patent to maintain reputation, for advertising, and to increase goodwill.
6. Tax Optimization Opportunities — Reducing the tax base by placing the intellectual property asset on the balance sheet and calculating amortization. It also allows for the payment of funds to the director or founder as royalties (with Personal Income Tax levied, but without mandatory Unified Social Tax). Furthermore, transferring royalties abroad may not incur income repatriation tax if the IP object was initially registered to a foreign entity.
7. Ability to Utilize International Patenting Procedures in Other Countries — Using the Ukrainian application as the foundation for subsequent patenting in other countries, maintaining priority based on the Ukrainian filing date. An international application must be filed within 12 months, and an application abroad generally cannot be filed without a corresponding Ukrainian application.
8. Advertising Resulting from Patent Publication — The ability to convey information to those who may wish to purchase the rights (license), as well as those who should be deterred.
9. Enriching the State of the Art *mdash; By providing a broad description, the state of the art can be enriched, making it more difficult for competitors to patent similar objects.
For example, describing various similar needle types in the description (even if not claimed in the formal claims) ensures that competitors cannot later patent these variants due to lack of novelty, while assessment and opposition are still focused solely on the claims.
4. Patenting Procedure (Stages and Cost)
Patenting an invention (utility model) involves at least 8 stages of painstaking work, during which patent attorneys define the scope of protection based on the client's needs.
Step 1. Conclusion of a Confidentiality Agreement
nformation regarding the object of patenting, the applicant, and the inventor is confidential. Some of this data (the information included in the application) remains confidential until the application for the invention (utility model) is published. Other data (information disclosed by the client during application preparation but not included in the application) remains confidential even after publication.
Our agency's obligations regarding confidentiality are detailed in the Agreement on the Confidentiality of Data Received from the Client about the Object of Patenting, which is signed before the preparation of the patent application begins.
Although the status of a patent attorney requires preserving the confidentiality of client information, concluding a separate agreement regulates these obligations in greater detail, providing the client with enhanced protection when disclosing sensitive information.
Upon signing the confidentiality agreement, the Agency proceeds to the next steps.
Step 2. Initial Information on the Applicant, Inventor, and Object of Patenting
(a) Determining who the applicant (future patent owner) will be, and regulating relations between applicants
The applicant (future patent owner) can be:
- The applicant (future patent owner) can be an individual or a legal entity. Each option has specific advantages and disadvantages; for instance, an individual can issue a license and receive royalties, while a legal entity can evaluate the IP object and place it on the balance sheet.
- The applicant can also be a single person or multiple people..
Who should be listed as the applicant (future patent owner)?
- The Inventor — iif the invention was made outside the scope of an employment contract, or if the employer refuses to patent it;
- The Employer — if an agreement on the distribution of rights has been concluded between the employer and employee, and the right to file the application has been transferred;
- Both Inventor and Employer — if there is no agreement on the distribution of rights between the employer and employee. In the absence of such an agreement, if the inventor is not listed as an applicant, the inventor may sue to invalidate the patent on the grounds of infringement of their rights.
Recommendations:
It is recommended to conclude an agreement on the distribution of rights among the future patent owners (applicants) if there are several, and to formalize relations with any investor before starting the patenting procedure.
Without an agreement between co-applicants, each of them can independently use the patent upon issuance (e.g., manufacturing the patented product as an individual entrepreneur). However, if a co-owner wishes to use the patent within their own company, they will need permission from the other co-owners, which should ideally be agreed upon beforehand, as obtaining consent later may be more difficult or costly.
We also recommend pre-agreeing on the distribution of income from issuing licenses to third parties or selling the rights, as the agreement can specify any percentage of income for each co-owner (in the absence of an agreement, these shares must be equal).
Importance of Concluding an Agreement Between the Applicant (Inventor) and Investor Before Filing
In cases where an inventor seeks an investor before filing a patent application, the investor may fear funding development or patenting without knowing the details, while the inventor fears disclosing information. To distribute responsibility, rights, and expenses between the applicant and the investor, and to mitigate the risks of bad faith on either side, an agreement regulating these issues is recommended.
(b) Determining who will be listed as the inventor, and regulating relations between the applicant and inventor
Who Should Be Listed as an Inventor
The inventor must be the person (or group of people) who actually carried out the development as a result of their intellectual and creative activity. Individuals involved in organizational work or financing are not considered inventors.
If the inventor and applicant are different people (e.g., employer is the applicant, employee is the inventor), it is essential to correctly define the inventors and applicants and conclude an agreement regarding the transfer of rights to file the application and the distribution of rights before starting the patenting procedure.
Incorrect designation of applicants and inventors does not affect the patent issuance, as Ukrpatent (like other patent offices) does not verify the truthfulness of this information. However, this can lead to negative consequences, such as the patent being subsequently declared invalid if an interested party files a lawsuit.
Examples:
— If other persons were listed as inventors when filing the application, the true inventor can file a lawsuit to invalidate the registration.
— If an employer files the application without an agreement on rights distribution with the employee, listing the employee only as the inventor (not a co-applicant), the employee can sue to invalidate the patent.
To prevent disputes, claims, and lawsuits, all relationships between these parties must be settled by appropriate agreements before filing the application to avoid potential invalidation of the registration based on infringement of any party's rights.
Step 3. Defining the Object of Patenting and Approving the Technical Specification for Application Preparation Execution Period:
Time to completion:
The analysis of initial data on the object of patenting is performed within 5 working days. If no clarifying questions are necessary, the Technical Specification is signed, and we proceed to the next steps.
| Description | Fees, EUR | |
| 10203 | ATTORNEY'S FEE for classifying the invention under the IPC (International Patent Classification) for patent search purposes — coefficient 1 | 20,00 |
| 10401 | ATTORNEY'S FEE for patentability search using online patent databases — coef. 1 (per each set of 15 IPC subgroups) | 250,00 |
| 10402 | ATTORNEY'S FEE for patentability opinion based on the search results — coef. 1 (per each set of 20 documents) | 250,00 |
Step 4. Patent Search
Purpose of the Patent Search:
- To determine compliance with the criteria of novelty and inventive step (for an invention) or novelty (for a utility model).
- To identify the closest prior art (prototype), which will be referenced in the description.
Execution Period for Patent Search:
The patent search typically begins concurrently with Step 3 (after sufficient data for classification under the International Patent Classification (IPC) subgroups is received from the Client). The search is conducted within 5 working days. The analysis of preliminary search results and the issuance of a written conclusion takes 5 working days after the search.
| Description | Fees, EUR | |
| 10203 | ATTORNEY'S FEE for classifying the invention under the IPC (International Patent Classification) for patent search purposes — coefficient 1 | 750,00 |
| 10401 | ATTORNEY'S FEE for patentability search using online patent databases — coef. 1 (per each set of 15 IPC subgroups) | 6500,00 |
| 10402 | ATTORNEY'S FEE for patentability opinion based on the search results — coef. 1 (per each set of 20 documents) | 7500,00 |
Step 5. Preparation of Patent Application Materials
Execution Period:
Preparation of application materials generally takes about 35 working days. The exact period is determined upon approval and signing of the Technical Specification and depends on the complexity of the technical solution and the completeness of the materials provided by the Client.
This phase involves drafting the independent and dependent claims, classifying the technical solution (IPC index), developing text for sections like "field of technology," "prior art," "technical problem/result," and "substance of the invention," as well as preparing drawings (figures) and the abstract.
| Description | Fees, EUR | |
| 10601 | ATTORNEY'S FEE for drafting an independent claim — coef. 1 | 200,00 |
| 10602 | ATTORNEY'S FEE for drafting a dependent claim — coef. 1 | 100,00 |
| 10603 | ATTORNEY'S FEE for classifying the invention under the current IPC version — coef. 1 | 20,00 |
| 10604 | ATTORNEY'S FEE for drafting Section “Statement of the Technical Field” — coef. 1 | 40,00 |
| 10605 | ATTORNEY'S FEE for drafting Section “Background information and prior art” (per one analogue or problem faced by inventors) — coef. 1 | 140,00 |
| 10606 | ATTORNEY'S FEE for drafting the statement of the technical problem or the technical result addressed by the invention — coef. 1 | 40,00 |
| 10607 | ATTORNEY'S FEE for drafting Section “Summary of the Invention” — coef. 1 (per one subject matter) | 200,00 |
| 10608 | ATTORNEY'S FEE for drafting Section “List of Figures” and brief description of each drawing (per one figure) — coef. 1 (per each set of 10 references) | 25,00 |
| 10609 | ATTORNEY'S FEE for drafting the descrioption of the causal link between the features of the invention and the expected technical result or solution of the problem — coef. 1 (per one subject matter) | 200,00 |
| 10610 | ATTORNEY'S FEE for drafting the descrioption of the product for Section “Detailed Description of the Embodiments” — coef. 1 (per one subject matter) | 170,00 |
| 10611 | ATTORNEY'S FEE for drafting the descrioption of the process for Section "Detailed Description of the Embodiments" — coef. 1 (per one subject matter) | 170,00 |
| 10612 | ATTORNEY'S FEE for drafting the Abstract — coef. 1 | 25,00 |
| 10613 | ATTORNEY'S FEE for preparing a drawing (figure) in electronic form — coef. 1 | 15,00 |
| 10614 | ATTORNEY'S FEE for additional processing of a drawing (figure) provided by the customer in electronic form — coef. 1 | 10,00 |
| 10615 | ATTORNEY'S FEE for compiling a patent (utility model) application on the basis of the prepared description, claims, abstract, and drawings — coef. 1 | 90,00 |
Step 6. Formalization, Filing of Application Materials, and Formal Examination
Period for Formal Examination:
The application materials are filed within 2 days after the materials are approved by the client and the filing fee is paid.
It is important to remember that only a formal examination is conducted for a utility model (Step 7 is not required), while an invention undergoes both a formal examination (Step 6) and a substantive (qualification) examination (Step 7).
The formal examination, without acceleration, is typically performed by the National Intellectual Property Authority (Ukrpatent) within 8 months for a utility model and up to 17 months for an invention.
If acceleration is ordered, the formal examination is completed within 20 working days.
| Description | Fees, EUR | |
| 10701 | ATTORNEY'S FEE for filing the drafted patent (utility model) application to the Patent Office — coef. 1 | 350 |
| 10721 | OFFICIAL FEE for filing a PATENT application (direct filing and PCT national entry), up to three claims [10100] - where the applicant (owner) is the inventor | 4* / 36** / 11*** / 55**** |
| 10722 | OFFICIAL FEE for filing a PATENT application (direct filing and PCT national entry), each additional claim over three [10100] — per 1 claim — where the applicant (owner) is the inventor | 0.5* / 4** / 1*** / 5**** |
| 10723 | OFFICIAL FEE for additional sheets over first 100 sheets — for a PATENT application [10100] — each set of 50 sheets — where the applicant (owner) is the inventor | 2* / 18** / 5*** / 27**** |
| 10801 | ATTORNEY'S FEE for patent prosecution during formal examination of a patent (utility model) application (tracking deadlines, receiving documents, reporting an office action) — coef. 1 | 100 |
* for an PATENT application — if the applicant (owner) is the inventor
** for an PATENT application — if the applicant (owner) is NOT the inventor
*** for a UTILITY MODEL application — if the applicant (owner) is the inventor
****for a UTILITY MODEL application — if the applicant (owner) is NOT the inventor
Step 7. Substantive Examination (for an Invention)
Period for Substantive Examination:
Step 7 is necessary only for an invention (a utility model requires only a formal examination).
The substantive examination, without acceleration, is usually performed by Ukrpatent within 15 months.
If acceleration is ordered, the substantive examination is completed within 80 working days.
| Description | Fees, EUR | |
| 11001 | ATTORNEY'S FEE for filing a request for substantive examination — coef. 1 | 50 |
| 11002 | ATTORNEY'S FEE for patent prosecution during substantive examination (tracking deadlines, receiving documents, reporting an office action) — coef. 1 | 200 |
| 11003 | ATTORNEY'S FEE for filing a request for early publication of the patent application before 18 months from the filing date — coef. 1 | 50 |
| 11021 | OFFICIAL FEE for substantive examination of the patent application, one independent item [11600] - where the applicant (owner) is the inventor | 14* / 136** |
| 11022 | OFFICIAL FEE for each additional independent claim over one [11600] - 1 claim — where the applicant (owner) is the inventor | 14* / 136** |
| 11023 | [] OFFICIAL FEE for requesting early publication of the patent application before 18 months from the filing date [11400] - where the applicant (owner) is the inventor | 0.5* / 5** |
* for an PATENT application — if the applicant (owner) is the inventor
** for an PATENT application — if the applicant (owner) is NOT the inventor
Step 8. Obtaining the Patent
Execution Period:
The fee for publication must be paid within 3 months after the positive decision of the examination.
The patent is issued within 2 months after publication (registration). This final step involves the payment of publication fees and state duties for issuance.
**This stage also includes payment of official fees for the examination.**
| Description | Вартість, грн. | |
| 14001 | ATTORNEY’S FEE for paying the publication fee and grant fee, obtaining and forwarding the patent to the Customer | 130 |
| 14021 | Basic publication fee (OFFICIAL FEE) [12400] - where the applicant (owner) is the inventor | 40* / 400** / 120*** / 600**** |
| 14022 | Extra publication fee for each page over 15 (OFFICIAL FEE) [12400] - 1 sheet — where the applicant (owner) is the inventor | 2* / 20** / 6*** / 30**** |
| 14024 | Patent grant fee (OFFICIAL FEE) — for non-residents of Ukraine — the equivalent of USD 100 | 100 |
* for an PATENT application — if the applicant (owner) is the inventor
** for an PATENT application — if the applicant (owner) is NOT the inventor
*** for a UTILITY MODEL application — if the applicant (owner) is the inventor
****for a UTILITY MODEL application — if the applicant (owner) is NOT the inventor
Consultations
We provide consultations on the protection of inventions and utility models in Ukraine and abroad, as well as written materials explaining the stages and costs 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
Contents of this page:
2. How does a Ukrainian Patent / Utility Model look like?
3. Why seek Patent or Utility Model protection in Ukraine?
Contents of this page: