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Ukraine: Updated Procedure for Payment of Fees for Actions Related to the Protection of IP Rights

Ukraine: Updated Procedure for Payment of Fees for Actions Related to the Protection of IP Rights

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On 16 September 2023 the Resolution of the Cabinet of Ministers of Ukraine "On Amendments to the Procedure for Payment of Fees for Actions Related to the Protection of Intellectual Property Rights" ("Resolution") will enter into force. The Resolution introduces new fees, provides additional reductions and clarifies existing ones.

Key takeaways

Overall, new changes are positive from a business standpoint. First of all, they pave the way for administrative proceedings before the Appellate Chamber which, from now on, may be used as an alternative to litigation in court. Secondly, they reduce some procedural fees and provide bigger discounts for filing trademarks electronically, thus encouraging paperless document flow.

In particular, the Resolution introduces the following changes:

  • New types of fees relating to the filing of oppositions by third parties against applications for inventions, administrative revocation of patents, obtaining a certificate of additional protection for inventions, carrying out information searches, restitution of rights by applicants and right holders, etc. (This also paves the way for administrative proceedings to be brought before the Appellate Chamber.)
  • Extended list of fee reductions, including fees for extension and renewals of missed terms ➢ Increased discount for the electronic filing
  • Changes to the wording in accordance with the new terminology

Detailed overview Among other reductions and discounts, the Resolution proposes the following changes. In the case of filing a trademark application in electronic form, the fees will amount to the following:

  • 75% of the established fee (comparative to the previous 80% discount)

Extension or renewal of missed term

  • Fees for requesting the extension or renewal of a missed term have been reduced by 50%.

An individual who is an applicant, patent owner or holder of a certificate for industrial design or a certificate for a semiconductor product layout must pay each fee for actions related to the protection of rights to such objects, except for some exclusions, in the following amount:

  • 10% of the established fee — if they are the inventors of the invention or the authors of the semiconductor product layout
  • 20% of the established fee — if they are the inventors of the utility model or the authors of the industrial design

Non-profit institutions and organizations that are applicants or patent owners for the invention/utility model shall pay each fee for actions related to the protection of rights to such objects, except for some exclusions, in the following amounts:

  • 12% of the established fee — if they are applicants for the invention or patent owners
  • 30% of the established fee — if they are applicants for the utility model or patent owners

Where the applicant or patent owner of the invention/utility model is the inventor together with the non-profit institution or organization, each fee for actions related to the protection of rights to such objects, except for some exclusions, shall be paid in the following amounts:

  • 15% of the established fee — if they are applicants for the invention or patent owners
  • 40% of the established fee — if they are applicants for the utility model application or patent owners

By Ruslan Drobyazko​, Partner, and Myroslava Koval-Lavok, Senior Associate, Baker McKenzie

Ukraine Knowledge Partner

AVELLUM is a leading Ukrainian full service law firm with a key focus on Finance, Corporate, Dispute Resolution, Tax, and Antitrust.

Our aim is to be the firm of choice for large businesses and financial institutions in respect of their most important and challenging transactions.

We build lasting relationships with our clients and make them feel secure in new uncertain economic and legal realities.

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AVELLUM is recognised as one of the leading law firms in Ukraine by various international and Ukrainian legal editions (Chambers, The Legal500, IFLR1000, The Ukrainian Law Firms, and others).

Firm's website: www.avellum.com

 

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