Patents

About service

We develop comprehensive patent strategies aimed at increasing monetization of the patented technologies and/or allowing the client’s businesses maximum freedom of operation.

 

Patent law is one of the most essential areas of intellectual property law – and one of the most complicated ones. A patent, once granted, ensures its holder’s exclusive right to use or license a respective invention, utility model or industrial design – and to take action against those using it illegally.

 

Obtaining patent protection and benefitting therefrom requires profound expertise and attention to minor details. It starts with patentability advice followed by successful patent prosecution in Ukraine and/or abroad. Once patent is obtained, it can be assigned or licensed to a third party. Sometimes an SPC may be received to secure an extended term of patent protection.

 

Even if a patent is granted, it will be cheap without its effective enforcement. A dispute may be resolved either amicably (via cease-and-desist letters, negotiations, etc.), or through litigation and/or customs and/or law enforcement agencies. Alternatively, our client may wish to ensure that its business is not hindered by the opponent abusing its patent rights - sometimes the patent protection may be bypassed by taking advantage of loopholes in the claims. The client may also wish to take it one step further and challenge the validity of the opponent’s patent. Any patent case brought to the court will likely require cooperation with forensic experts.

Our team has extensive experience both in patent prosecution and patent litigation. We understand the client’s needs and develop comprehensive patent strategies – be it by enforcing the patents, bypassing or challenging it. We develop and implement patent portfolio management strategies and patent litigation and enforcement strategies in disputes spanning across multiple jurisdictions, achieving synergy of legal and technical skills.

 

Our expertise in this area includes the following:

 

·        Advising on patent matters

·        FTO searches and analysis

·        Patentability analysis

·        Patent prosecution

·        Pre-grant and post-grant oppositions

·        Receiving SPCs

·        Patent monitoring

·        Managing patent portfolios

·        Patent litigation (patent infringement, patent invalidation, challenging SPCs, etc.)

·        Enforcing patents at the Customs authorities

·        Prosecuting patent infringements through the law enforcement bodies

A country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backwards

- Mark Twain

The more people use my inventions, the better the country will be

- Sakichi Toyoda

Key contacts

Oleksandr Mamunya

Founding Partner

Oleksandr Mamunya is an Attorney-at-law and a Patent and Trademark Attorney. Since 2003 Oleksandr has been practicing in the area of Intellectual Property, including patents, trademarks, trade names, designs, copyright, and related rights, domain names, as well as IP enforcement, litigation and anti-counterfeiting. His experience covers litigation and out-of-court dispute resolution, including patents, trademarks, and trade names for major Ukrainian and international companies. In addition, he handles complicated trademark and patent prosecution matters and works on complex IP assignments and licensing deals, and manages big clients’ IP portfolios. Oleksandr works in close cooperation with the Ukrainian PTO and is involved in projects to improve mechanisms of intellectual property rights protection, and in elaborating and implementing IP reform in Ukraine. Oleksandr is a member and active participant of the International Association for the Protection of Intellectual Property ( AIPPI ) (since 2012), International Trademark Association ( INTA ) (since 2008) (member of the Anticounterfeiting Committee (2022-2023), the Parallel Imports Committee (2017-2021), and the leader of the Case Law Development Working Group (2021), Ukrainian Bar Association ( UBA ) (Chair of IP Committee (since 2017), National Association of Patent Attorneys of Ukraine (admitted to practice as Patent and Trademark Attorney since 2010), European Business Association (since 2012) (Сouncillor of the Agrochemical Committee and Consumer Electronics Committee), Kyiv City Bar Association (admitted to Bar since 2005). Education Ukrainian School for Political Studies, 2016 State Institute of Intellectual Property, 2009 World Intellectual Property Organization (WIPO) Academy, 2005 Taras Shevchenko National University of Kyiv, Law, 2004​

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Ganna Prokhorova

Counsel, Attorney-at-law

Ganna Prokhorova is an attorney-at-law, mediator, and arbitrator focused on Intellectual Property, and particularly trademarks, copyright and design, unfair competition, and art law. Since 2005 she has been advising well-known domestic and international companies on the protection of intangible assets through a combination of monitoring and filing strategies, negotiating and drafting IP assignments, licensing and franchising agreements, as well as judicial and out-of-court defense against infringement and dilution. Ganna has a profound experience in IP court cases and domain name disputes representing famous international brand owners. She is also regularly engaged in combating counterfeits and protecting plant varieties in Ukraine. Ganna is a WIPO Domain Name Panelist under the UDRP and UA-DRP at WIPO (Geneva, Switzerland), and a URS Examiner at MFSD (Milan, Italy). Ganna is an arbitrator at the Court of Arbitration for Art (CAfA) (Hague, the Netherlands). In addition, she has for a long time been in the leadership of several international and domestic organizations and associations, such as the International Trademark Association ( INTA ) (2015-2021) (member of the Copyright Committee and the Leader of “Works Made for Hire: Review of Legislation and Practice” Task Force covering 60+ countries, 2020-2023, member of the Bulletin Committee – Features, 2018-2019, member of the Anticounterfeiting Committee, 2016-2017), the European Community Trade Mark Association ( ECTA ) (member of the Anti-Counterfeiting Committee, 2019-2022), the Pharmaceutical Trade Marks Group (member since 2016), the Ukrainian National Bar Association ( UNBA ) (member of the IP Committee Board since 2019), the Ukrainian Bar Association ( UBA ) (member since 2006). Ganna is passionate about IP. Her emphatic, dynamic and flexible approach to handling matters, together with the ability to manage and foresee different issues in advance, and the solid network of relations with IP professionals worldwide, are the values appreciated by clients. Education Sotheby’s Institute of Art, 2018 State Institute of Intellectual Property, IP Law, 2016 The Hague Academy of International Law, 2015 World Intellectual Property Organization (WIPO) Academy, 2007 Kyiv National Economic University named after Vadym Hetman (KNEU), Commercial Law, 2006

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Anastasia Mindrul

Patent and Trademark Attorney

Anastasia is a registered Patent and Trademark Attorney of Ukraine working in IP since 2004. She primarily focuses on legal strategies for protecting and enforcing IP rights, patent and trademark prosecution, pre-trial counselling, copyright enforcement, geographical indications, trade names, industrial designs, and representing clients before the Chamber of Appeals of the UA PTO. Anastasia provides a diverse range of services at every stage of the IP life cycle, from pre-filing consulting (preparatory work) to post-grant oppositions, further assignment, and licensing. Anastasia is the author of many academic articles regarding IP and is the co-author of several monographs on the protection and enforcement of IP rights. Moreover, she participated in a number of working groups to develop, improve, and enforce intellectual property legislation in Ukraine. Her recent matters: Advising one of the world fastest-growing direct selling companies on possible strategies against its key trademark infringement by the third party who attempted to register a similar mark in Ukraine for the goods related to non-medicated cosmetics and pharmaceutical preparations. The case included collection of evidence, preparing and filing an opposition against the conflicting mark. Advising a global health information technology and clinical research on available strategies for protecting against unfair competition, the case included collecting evidence, preparing and filing an opposition against the conflicting mark. Supporting a well-known US multi-level marketing (MLM) company that sells health, beauty, and homecare products in the complicated trademark prosecution matter. The project included not only drafting a reply to the Provisional refusal but negotiating with the owner of the opposing mark the terms and conditions of a possible co-existence agreement, drafting and filing the latter with the UA PTO. Assisting in the assignment of several patent applications and registrations to the global digital agricultural company, advising on the peculiarities of the applicable Ukrainian law. Education State Institute of Intellectual Property, 2005 Kyiv National Economic University named after Vadym Hetman (KNEU), Law, 2003

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Oleksii Lukianov

Associate, Attorney-at-law

Oleksii has been practicing litigation since 2010, most of his professional career he worked with top-tier Ukrainian law firms representing large foreign and domestic companies. He has been working in the field of Intellectual Property since 2013.   His primary focus is Intellectual Property (patent, trademark and copyright) and intangible assets litigation, and anti-counterfeiting. Aside from his courtroom practice Oleksii handled complex licensing projects and IP due diligence in various industry sectors (television, pharmaceuticals, IT, communications, etc.). He is admitted to the Bar and is a member of the Ukrainian Bar Association (UBA). His recent highlights include: Representing an international science-centered pharmaceutical company in a litigation case aimed at invalidation of the opponent’s patent for a method of treatment for disseminated sclerosis. Representing one of the biggest NGOs in Ukraine dealing with HIV treatment in a particularly complex patent invalidation litigation. Representing Japanese multinational automotive manufacturer in a large-scale anti-counterfeiting program in Ukraine. Education Kyiv National Economic University named after Vadym Hetman (KNEU), Law, 2010

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Ilona Boliubash

Associate, Attorney-at-law

Ilona Boliubash specializes in Intellectual Property litigation with a focus on patents and trademarks, as well as advises clients on copyright, collective management of copyright and plant varieties protection. Ilona’s expertise also includes domain name disputes under the UA-DRP, GDPR compliance, data protection as well as defamation cases. Her primary focus industries are pharmaceuticals, IT and TMT. Ilona has a profound experience in complex trademark protection projects, including multiple court disputes regarding series of trademarks of one of the biggest Ukrainian pharmaceutical producers (e.g., invalidation of the UA PTO Appeal Chamber decision) and a successful infringement case for a famous British engine manufacturer. Ilona actively participates in developing her alma mater's moot court society. She is a member of the Unfair Competition Committee of the International Trademark Association (INTA) (2022-2023), WIPO ADR Young (WIPO Arbitration and Mediation Center) and the Ukrainian Bar Association (UBA). Ilona is admitted to the Bar. Ilona Boliubash took an active part in a variety of complex projects in IP and, inter alia, in the following: A number of court disputes over the trademarks used as key trade names for the most popular medicinal products of one of the biggest Ukrainian pharmaceutical companies. The disputes included invalidation of the UA PTO Appeal Chamber decision re the competitor's TM, numerous trademark and patent invalidation cases against unfair market players, including the invalidation based on generic nature of the trademark. Collecting evidence, drafting and filing the request, and subsequent recognition of several trademarks as well-known by the UA PTO Appeal Chamber. Successful trademark infringement case for a famous British engine manufacturer which resulted in taking down the client's trademarks from the infringer's website. Ceasing the illegal use of the world-renowned client’s trademarks in the domain names under the UA-DPR proceedings. Representing the top multinational tech company in several litigation matters where early termination of the client’s TMs and invalidation of the Appeal Chamber decision on recognition of the well-known status of the TM is claimed. Representing major innovative European lifescience company in a number of patent litigation matters, including patent infringement, patent invalidation and preliminary injunction matters. Representing the world-known FMCG company before the Ukrainian customs authorities in the course of trademarks recordals in the IP objects registry, and fighting potentially counterfeiting activities. Education Taras Shevchenko National University of Kyiv, Law, 2019 World Intellectual Property Organization (WIPO) Academy, 2019

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Olga Reznytska

Patent and Trademark Manager

Olga specializes in patent and trademark prosecution matters. She provides a full scope of services related to IP portfolio management, including providing advice on registrability, trademark watch, trademark similarity and identity searches, registration of trademarks according to national and international procedures, preparing replies to oppositions and provisional refusals, preparing appeals to the Chamber of Appeals, preparing third-party oppositions. Olga is also experienced in patent prosecution, including drafting and filing the applications, analysis of PTO examiner requests, recommendations regarding the requests, drafting responses to office actions, obtaining letters of patent, managing annuity payments, etc. She is also experienced in copyright registration, drafting trademark and patent assignment agreements, license agreements, and its recording with the local PTO. Olga's recent work includes: Advising betting company on available options for protecting its TMs against unfair competition. The case included collecting evidence, preparing and filing opposition against the conflicting marks. The case is significant because the client’s marks are widely used for gambling services that became legal in Ukraine only recently. Managing an essential number of patent applications of a digital agriculture company, including overcoming complicated Provisional refusals. Consulting the client on the peculiarities of Ukrainian patent legislation related to digital farming. Supporting the successful registration of the TM of a well-known Italian wine manufacturer including advising on overcoming the opposition and provisional refusal, which were based on mistakenly assumed similarity with the marks of another wine manufacturer. It is noteworthy that these parties face the same conflict in other jurisdictions. Education Institute of Intellectual Property of the National University “Odesa Law Academy” (Kyiv), IP Management, 2018 Kyiv Institute for Translators and Interpreters, Kyiv, 2012

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