Fighting Patent Trolling

We all remember cases of patent trolling in Ukraine, when patents for clothes hangers, flasks, rubber plugs were obtained by relevant persons.

The mechanism for further actions is usually the following – after obtaining a patent (most often it is an industrial design that does not bear the sign of novelty), the troll requires him to pay a fee for using the IP object or enters information on his rights into the Customs Register of intellectual property objects and prevents them from doing so import of goods into the customs territory of Ukraine.

So, the Ukrainian legislator has entered an active phase in working on this problem. This week, the Supreme Council adopted as a basis in the first reading two laws in the field of intellectual property protection (both in the framework of fulfilling obligations to bring national legislation in line with EU law).
In particular, the law No. 2258 is aimed at combating patent trolling, which proposes such changes:

1) in relation to trademarks:
– filing an application in electronic form
– the grounds for refusal to register trademark, invalidation of such registration are clarified
– registration of collective trademark
– clarified the procedure for providing legal protection for international registration
– increased sanctions for violation of rights to trademark

2) in relation to industrial designs:
– filing an application in electronic form
– additional criteria for protection – individual character
– providing legal protection to unregistered industrial designs
– the ability to split the application
– the maximum validity period has been increased – up to 25 years
– instead of a patent there will be a certificate
– the possibility of pre-trial cancellation of a certificate in the Appeals Chamber (introduction of the “post grant opposition” mechanism)

Of course, by the second reading in the draft, changes are possible, we keep our finger on the pulse.