Patenting Archives - Polikarpov Law Firm

Question 1

Can I patent my invention on my own, or do I have to contact a patent attorney

Accepted Answer

Technically, Ukrainian law does not prohibit an inventor from going through the patenting procedure on his or her own. You have the right to prepare all the documents, file an application with Ukrpatent, correspond with examiners, assert your rights, etc.

However, in practice, independent patenting is a complicated and risky path that rarely leads to success.The patenting procedure has many nuances and pitfalls that are well known to experienced patent attorneys, but can become an insurmountable obstacle for a novice inventor.

Let us consider the main risks of independent patenting:

Incorrect execution of documents:even minor errors or inaccuracies in the application, description of the invention, claims, etc. may lead to a patent refusal. The requirements for the execution of documents are quite strict, and Ukrpatent checks them very carefully.
Incomplete disclosure of the essence of the invention:It is important not only to describe your invention, but also to do so in such a way as to clearly distinguish it from existing technical solutions and not to leave “loopholes” for competitors.
Incorrectly formulated claims:The claims are the key element of a patent that defines the scope of your legal protection. An inaccurately or too narrowly worded claim can negate your entire protection.
Ineffective communication with Ukrpatent:You will have to prepare answers to examiners’ requests, participate in negotiations, and possibly even appeal decisions in the Appeals Chamber. Without experience and legal knowledge, it will be extremely difficult.

Hiring a patent attorney is an investment that will more than pay off in the future.An experienced specialist will take care of all the hassle of patenting your invention and significantly increase your chances of success.

Question 2

Are there any government support programmes for inventors that help with patenting

Accepted Answer

For example, there are government initiatives in Ukraine aimed at stimulating innovation and helping inventors to finance patenting. Although there are currently no direct grants for patenting inventions in Ukraine, there are other forms of support:

Funding for research and development (R&D):

The Fund for Fundamental Research: provides grants for basic research, the results of which may have significant innovative potential.
National Research Foundation of Ukraine: finances applied research and experimental development aimed at creating new technologies, materials, products.

Obtaining funding for R&D can indirectly help with patenting inventions, as part of the funds can be used to prepare an application, conduct a patent search, pay fees, etc.

Benefits for small and medium-sized enterprises:

Discounts on patent fees:for some categories of applicants, in particular for small businesses, discounts are provided for the payment of fees for filing an application, conducting an examination, issuing a patent, etc.

Information and consulting support:

UKRNOIPI:provides free consultations on patenting issues, conducts seminars and trainings for inventors.
Non-governmental organisations and associations of inventors: provide legal and information support to their members, promote domestic inventions.

It is important to keep abreast of legislative updates and current programmes to support inventions, as well as to actively use all available opportunities to finance the patenting of your developments.

Question 3

What if my invention is already being used by another person without my permission?

Accepted Answer

If you find that your invention is being used illegally by another person or company without your permission, do not hesitate to act. Ukrainian law provides you with tools to protect your rights, but it is important to act decisively and competently:

Collection of evidence:

Save any evidence of your invention:photos, videos, web screenshots, brochures, product samples, etc.
Document the facts of use:dates, places, circumstances, names of witnesses, if any.
Apply to a notary to certify evidence:Notarisation will significantly increase the reliability of evidence in court.

Pre-trial settlement:

Send a claim to the infringer:In writing, notify the infringer of your rights, demand that the illegal use be stopped, that the damages be compensated and that the infringer pay compensation. Please indicate the specific timeframe for fulfilling your requirements.
Consider mediation:Mediation is an out-of-court dispute resolution procedure involving an independent mediator.

Judicial protection:

If the pre-trial settlement fails, file a lawsuit to protect intellectual property rights.
You have the right to demand that the infringer comply:
- Stopping the illegal use of an invention.
- Withdrawal of counterfeit products from circulation.
- Compensation for damages in full (lost profits may also be included in the amount of damages).
- Recovery of compensation for infringement of intellectual property rights (in Ukraine, the amount of compensation can reach significant amounts).

It is important to remember:

The sooner you take action to protect your rights, the more likely you are to succeed.
Contacting a qualified lawyer who specialises in intellectual property matters will significantly increase your chances of winning a case in court.

Question 4

Is it possible to patent software in Ukraine, and if so, what are the peculiarities

Accepted Answer

This question often causes confusion. Answer: It is impossible to directly patent software in Ukraine.The Law of Ukraine “On Protection of Rights to Inventions and Utility Models” directly excludes software as such from the objects of patent protection.

However, this does not mean that the software is not protected at all.There are other protection mechanisms that can be effective if used correctly:

Copyright:

It appears automatically when the software is created and does not require registration.
Protects the source code of a program and its object code as literary works.
Grants the author (or its assignee) exclusive rights to reproduce, distribute, modify and otherwise use the Software.
To confirm the authorship and date of creation, it is recommended to deposit the source code with an accredited organisation.

Patenting inventions implemented with the help of software:

If your software is part of a broader technical solution that is “technical in nature” and solves a specific technical problem, it can be patented as an invention.
For example, you can patent a device control system, a method of data processing, a method of information transmission that are implemented with the help of your software.
In this case, the patent will protect not the software itself, but the technical solution it implements.

Trade secrets:

If your software code contains know-how, secret algorithms or other confidential information, you can protect it as a trade secret.
Establish a trade secret regime in the company and sign non-disclosure agreements with everyone who has access to your code.

The choice of the best way to protect software depends on the specific circumstances and the nature of the software itself.It is recommended to consult a patent attorney or a lawyer specialising in intellectual property to determine the most effective protection strategy.

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