On February 9, 2024, the new Regulation of the Appeals Chamber of the Ukrainian National Office for Intellectual Property and Innovations (further — IP Office) entered into force. The IP community is eagerly awaiting the resumption of the Appeals Chamber’s work because now, in addition to its traditional and customary powers to review oppositions against decisions of the IP Office regarding acquisition of intellectual property rights and applications for recognition of a trademark as well known in Ukraine, the Appeals Chamber will have the opportunity to implement Ukrainian version of the «post-grant opposition» procedure.
What is «post-grant opposition» and what role does the Appeals Chamber play in this mechanism?
In 2020, regulation in the field of intellectual property underwent significant changes due to the harmonization of Ukrainian legislation with the legislation of the European Union, in accordance to which «post-grant opposition» is the recognition of patent rights for inventions, utility models, and industrial designs as invalid through an administrative procedure, which allows for avoiding the resolution of such disputes in court.
The Appeals Chamber comes to the forefront, as it is the administrative body responsible for implementing the extra-judicial review of the validity of corresponding intellectual property rights. To initiate the procedure for declaring patent rights for inventions and utility models invalid, a person must submit a substantiated application to the Appeals Chamber for the recognition of patent rights for inventions (utility models) as invalid, either in whole or in part, based on the grounds of non-compliance with the patentability criteria as defined by law. In the case of industrial designs, the application must relate to the conditions of granting legal protection prescribed by law.
The Ukrainian version of “post-grant opposition” in numbers
You can file an appeal claim to recognize the rights to a utility model or industrial design as invalid at any time during the validity period of the property rights and even after the termination of such validity.
For inventions, the submission deadline is 9 months from the date of publication of information about state registration.
The state fee is the same for all three objects and amounts to 32,000 UAH (around USD 850).
The decision of the Appeals Chamber approved by the IP Office can be challenged in court within 2 months from the date of receipt.
What are the benefits for businesses?
The administrative procedure is intended to ensure the quality and genuine innovative nature of registered inventions, utility models, and industrial designs. Special attention should be paid to the compliance of registered industrial designs with the conditions for granting legal protection. Since the IP office does not conduct substantive examinations of industrial designs during the state registration process, and the review is limited to a formal stage, there is a high probability that an object lacking novelty and/or individual character may obtain legal protection.
Consideration of the appeal claim is an administrative process, which means faster, simpler, and cheaper (a lot!). Such a mechanism will significantly save time and resources for challenges compared to the review in overloaded courts.
The long trial creates uncertainty regarding the timelines for realising projects related to new technology. Therefore, stakeholders have two options: to stop investments until a positive decision is reached or to continue investing in the product, risking to receive a conclusion of its non-compliance with patentability criteria. The prompt resolution of disputes by the Appeals Chamber aims to minimize the uncertainty and risks it generates.
Considering disputes in the Appeals Chamber will help reduce the workload on courts, and its practices and approaches could serve as a solid foundation for final judicial decisions, provided both mechanisms are appropriately synchronized.
P.S. Waiting for a new practice
The Appeals Chamber can offer an effective and efficient alternative to lengthy and costly court disputes. After the final coordination and approval of the personnel, when the Appeals Chamber resumes its operations, we will see how the new practice of invalidating intellectual property rights will develop.
