Protection of the Interests of Persons in the Field of Intellectual Property during Martial Law

Under martial law, it is extremely important to create legal mechanisms to protect the interests of authors, performers, inventors and other subjects of intellectual property rights, and to prevent the loss of intellectual property rights.

On April 1, 2022, the Verkhovna Rada of Ukraine adopted as a basis and in general the Draft Law of Ukraine No. 7228 “On Protection of Interests of Intellectual Property during Martial Law” in order to minimize the impact of negative factors and consequences of martial law on intellectual property rights.

The Draft Law provides for the following important changes:

1) Expiration of the terms related to the protection of intellectual property rights

Starting from February 24, 2022, the deadlines for actions related to the protection of intellectual property rights, as well as the deadlines for the procedures for acquiring these rights, defined by the following legislative acts, shall be terminated:

– Law of Ukraine “On Protection of Rights to Marks for Goods and Services” (in particular, the term of the trademark certificate, the term for eliminating the errors of the application for trademark registration, etc.);

–  Law of Ukraine “On Protection of Rights to Inventions and Utility Models” (the term of validity of intellectual property rights to inventions and utility models, deadlines for filing an application for invalidation of rights to inventions, etc.);

– Law of Ukraine “On Copyright and Related Rights” (the deadline for eliminating the errors of the application for registration of copyright or contract relating to the author’s right to the work, etc.);

–  Law of Ukraine “On Protection of Industrial Designs” (in particular, the term of validity of property rights to a registered industrial design, the deadline for submission of additional materials for the examination of the application for registration of industrial designs, etc.);

–  Law of Ukraine “On Legal Protection of Geographical Indications“ (the deadline for filing an objection on the non-compliance of the claimed geographical indication with the conditions of legal protection, deadline for appealing the decision on the application for registration of geographical indications, etc.);

– Law of Ukraine “On Protection of the Rights to the Layout of Semiconductor Products” (the term of validity of the certificate of registration of the layout, the period of administrative or judicial appeal against the decision to refuse registration of the layout, etc.);

– Law of Ukraine “On Protection of Rights to Plant Varieties” (the term of validity of intellectual property rights to a plant variety, the period for making changes to the materials of the application for a variety, etc.).

All certificates, patents certifying the origin of intellectual property rights, as well as relevant intellectual property rights continue to be valid during martial law and are implemented by the subjects in full.

The period of suspension shall continue from the day following the day of termination or abolition of martial law in Ukraine, taking into account the time elapsed before their suspension.

If the period of validity of the trademark certificate, the period of extension or maintenance of intellectual property rights falls on February 24, 2022 or another date during martial law, the relevant action to extend or maintain the property rights to intellectual property may be committed by a person within 90 days from the day following the day of termination or abolition of martial law.

Please note that the Draft Law No. 7228 does not provide for the extension of the suspension rules to the deadlines set for the implementation of actions by the State Enterprise “Ukrainian Intellectual Property Institute” (hereinafter referred to as “Ukrpatent”), which performs the functions of the National Intellectual Property Authority. In particular, this applies to the deadlines for consideration of applications, examination of applications, deadlines for consideration of objections of applicants, etc.

2) Regarding the payment of fees for actions related to the protection of intellectual property rights

It is proposed to give the right to individuals and/or legal entities to submit documents (applications, petitions, objections, responses, etc.), the submission of which is provided by special laws of Ukraine in the field of intellectual property and regulations of the Ministry of Economy of Ukraine, within 90 days from the day following the day of termination or abolition of martial law, without payment of fees for renewal, extension or сontinuation of the terms provided by these regulations.

This exemption will apply to all fees provided for in the Procedure for Payment of Fees for Actions Related to the Protection of Intellectual Property Rights, approved by the Resolution of the Cabinet of Ministers of Ukraine of December 23, 2004 No. 1716 (with following amendments).

The Law of Ukraine “On Protection of Interests of Intellectual Property during Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine” will enter into force after its official promulgation.

How Does Ukrpatent Operate under Martial Law?

According to Ukrpatent, the enterprise continues to operate normally, carryng out the necessary functions and continuous operation of the state system of legal protection of intellectual property.

You may find out about the peculiarities of the exercise of powers of the National Intellectual Property Authority during martial law at: https://ukrpatent.org/uk/articles/vykonannia-povnovazhen-noiv-vs

Currently, individuals and legal entities may perform most of the actions related to the protection of intellectual property rights through electronic means of communication.

Thus, applications for state registration of copyright and agreements concerning the author’s right to a work are accepted at the e-mail address of Ukrpatent copyright@ukrpatent.org, national applications for registration of trademarks, industrial designs, geographical indications, applications and withdrawal requests, transfer of rights to receive security documents, submission of objections against applications are accepted at the e-mail address office@ukrpatent.org in the presence of a qualified electronic signature of the applicant.

At the same time, the Appeals Chamber of Ukrpatent has temporarily suspended the consideration of objections on the merits in the appeal session, in particular by videoconference. At the request of the participants, the consideration of the objection may be conducted in writing on the basis of available materials.

“Prime” Law Firm offers a wide range of services in the field of intellectual property and provides legal support on all issues of origin, application and enforcement of intellectual property rights of individuals and legal entities.