On July 21, 2020, the parliament of Ukraine adopted the law “On Amendments to Certain Legislative Acts Concerning the Reform of Patent Law”. The document shortens the list of objects that can receive patent protection and introduces a post-grant opposition system.
The main objectives of the reform were to reduce the level of “patent trolling” (first of all, by using the utility model patent tool), and solving the problem of “evergreening of patents” in the pharmaceutical industry.
Among others, novelties have been introduced:
– It is specified that the object of a utility model can be a device or a process.
– It is impossible to obtain a patent for: the results of artistic design; surgical or therapeutic methods of treating a human or animal, methods of diagnosis; human cloning processes; discovery, scientific theory, mathematical method; computer program; form of information presentation; the appearance of products aimed at satisfying aesthetic needs.
– New patents for medicinal products that differ from those that have already received patent protection, including salts, esters, composition, combination, and other derivatives, polymorphs, particle sizes, if they do not significantly differ in effectiveness, fall under the ban.
– Possibility of using a patent for an invention during an additional term of protection for medical products for the purpose of manufacturing products for export.
– Cancellation of a patent for a utility model is possible through the Chamber of Appeal of the National Intellectual Property Agency.
– Possibility to challenge the validity of a patent for an invention within 9 months after the publication of information on registration through the Chamber of Appeal.
– Non-residents are entitled to pay the official fees directly to the National Intellectual Property Agency.
– Possibility of issuing protecting documents in electronic form.
The laws implement in Ukrainian legislation Articles of the Association Agreement with the EU, the provisions of Directive 98/44/EC on the legal protection of biotechnological inventions, Regulations (EC) No. 469/2009 and No. 2019/933 concerning the supplementary protection certificate for medicinal products, Regulation (EC) No. 1901/2006 on medicinal products for pediatric use, Directive 2001/83/EC on the Community code relating to medicinal products for human use, Directive 98/71/EC on the legal protection of designs, Council Regulation (EC) No. 6/2002 on Community designs.
Earlier, the Ukrainian parliament passed a law on the creation of the National Intellectual Property Agency.