On April 1, 2022, the Ukrainian Parliament enacted the “Law on Protection of Interests of Persons in the Sphere of Intellectual Property during the Martial Law in connection with the Military Aggression of the Russian Federation against Ukraine” (the “Law”). This legislation temporarily suspended all deadlines related to the acquisition and maintenance of intellectual property rights (IPRs).
The primary purpose of the Law was to “prevent the loss of IPRs during martial law” by providing a temporary legal safeguard for applicants, owners, and their representatives until the military situation in Ukraine stabilizes. While crucial in the early stages of the conflict, the Law inadvertently allowed some applicants and owners to abuse their IPRs, leading to conflicts with existing laws and enforcement challenges.
Impact on Patent Law
One of the most significant issues resulting from the adoption of the Law emerged in the field of patent law, largely due to the economic significance of sectors heavily dependent on patent protection.
Specific provisions of the Law can be interpreted to extend the validity of Ukrainian patents beyond the standard 20 years, or 25 years with supplementary protection. At the same time, it allows patent holders, especially in the pharmaceutical industry, to actually maintain extended monopolies on their patented products, creating legal uncertainty and potentially reducing the investment appeal of the Ukrainian pharmaceutical market in the short term.
Legal Challenges and Proposed Amendments
As of today, the Supreme Court has yet to clarify its stance on the de-facto extension of patents during martial law. Specifically, a major player in the Ukrainian pharmaceutical market have sought state registration for medicinal products allegedly containing active substance protected by patent set to finally expire during martial law without the respective patent owners’ permission. The first instance court court found violation, emphasizing that the patents remained valid due to the provisions of the Law. However, the appellate court and, potentially, the Supreme Court has not yet opined on the issue.
Given the contradictory nature of the Law’s provisions, five draft bills proposing amendments have been presented to Parliament since mid-2023. However, each draft offers only partial solution and does not address the situation comprehensively. Specifically, the proposed amendments focus on:
preventing the de-facto extension of patents that finally expired during martial law, or
cancelling the suspension of certain deadlines related to the acquisition or maintenance of IPRs, such as deadlines for payment of filing fees or responding to provisional refusals, which have been subject to abuse by applicants.
It is clear that the original purpose of the Law has largely been exhausted, and it now can do more harm than good. Significant amendments are necessary to balance the rights and interests of individuals in the field of intellectual property during martial law. While it is difficult to predict the legislative approach on this issue, the growing public interest and the urgent need for reform suggest that changes are on the horizon.
SME Fund 2024 Temporarily Suspends Reimbursements Amid High Demand
The SME Fund 2024, a grant scheme designed to help small and medium-sized enterprises (SMEs) protect their intellectual property rights, has temporarily halted reimbursements for patent, trademark, and industrial design registrations due to exhausted funds.
However, Ukrainian entrepreneurs can still apply for 75% reimbursement (up to €1,500) for EU plant variety protection costs. The program runs until December 6, 2024, with updates expected in early 2025.
National Bank of Ukraine Permits Cross-Border IPR Payments
On July 10, 2024, the National Bank of Ukraine amended Resolution No. 18 “On the Operation of the Banking System Under Martial Law” dated February 24, 2022.
The amendments now allow authorized institutions to perform cross-border money transfers for transactions related to fees for protecting IPRs, including payments to foreign patent offices and patent attorneys abroad.
Ukraine Updates Industrial Design Rules
On May 1, 2024, the Ministry of Economy of Ukraine issued Order No. 547/41892, approving the Rules for filing and processing industrial design applications and international registration of industrial designs.
The updated Rules streamline electronic document management and facilitate the commercialization of intellectual property.
Notably, the Rules require UAPTO to verify if applicants or authors have connections to an aggressor state and to refuse registration if such links are confirmed.
The Appeals Chamber of the UAPTO Resumes Functions
On June 18, 2024, UAPTO issued Order No. 93/2024, approving the staff composition of the Appeals Chamber, which was agreed upon by the Ministry of Economy of Ukraine.
The Appeals Chamber will resume its functions under the updated Regulation, which also introduces a new post-grant opposition procedure.
In Office
Mamunya IP has been recognized among Ukraine's top five IP practices by PRAVO.UA. Managing partner Oleksandr Mamunya, partner Ganna Prokhorova, and patent attorney Anastasia Mindrul received individual recognition for their contributions.
Mamunya IP once again partnered at the International IP Forum 2024. During the event, Oleksandr Mamunya interviewed Ukrainian PTO Head Olena Orliuk, discussing Ukraine's IP strategy, legal reforms, and significant court decisions. Dmytro Stefanovych also presented key rulings in the intellectual property sector.