Nataliia Petrova: “Patent shall work”

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Nataliia Petrova

Nataliia Petrova, Director for Examination of Ukrainian Intellectual Property Institute (Ukrpatent), has given practical guidelines to authors of ideas, inventors, startuppers regarding obtaining of protective documents for their developments in Ukraine and abroad.

For your information

Ukrpatent is the state enterprise, whose primary goals are: accepting applications for the issue of protective documents for industrial property objects, examining the applications for industrial property objects as to their compliance with legal protection qualification, state registration of industrial property objects and conversion of their legal status as well as official publication of the appropriate information.

Whether the information on invention is protected, while Ukrpatent is considering the application for protective document obtaining

The first document, which the will be received by the inventor upon the submission of application for any industrial property object, is the notification on the setting of application submission date. From this very moment, the temporary protection of information contained in the application begins.

If later on everything is smooth and developer gets protective document (patent), then its validity period commences from the date, indicated in the notification (if the priority is declared – then from the priority date).

What shall be done first: to protect the invention or to launch its implementation

Ukraine is currently embarking on the course of civilized world. And experience of developed economies shows that prior to the introduction of development and even prior to the launch of pilot production, if would be better for you to have protective document.

It can be surely said that foreign investors will not invest in Ukrainian development, if, at least, its authors do not have protection as to intellectual property within the territory of Ukraine, as a minimum.

Information in the application shall be stated in such a way for any third person to be able to reproduce the development, which is being applied for, using the description and drawings

The most common mistakes while preparation of applications

Ukrpatent treats applicants with respect. Among them there is a big number of unique, ingenious persons, who, on numerous occasions, independently work on preparation of applications without using the services of patent agents.

But the applicants do not always duly evaluate the documents submitted to Ukrpatent for industrial property objects.

For instance, very often this relates to the distribution of remuneration among invention authors, which may be got by them in the event of successful implementation of their developments when the patent is obtained.

When submitting documents, Ukrpatent is only making sure for such distribution document to exist, with no in-depth study of its content. And all the responsibility for the amount and distribution of remuneration is borne by the authors themselves. If there is any point at issue, Ukrpatent will not be able to help.

Therefore, our organization recommends for the applicants to pay more attention to this issue, because very often it turns out that for authors it is much easier to receive protective document for their invention than to divide real or possible revenue afterwards.

Moreover, on numerous occasions applicants are afraid for their invention to be stolen. As a result, they try to conceal some information, not to disclose the information on the invention in application to the fullest extent.

It is clear that there are thefts of developments. And if we refer to large scale, serial productions, then it often comes to trial. In this case, if in the protective document something is not given in details, or stated inaccurately, then such document will not be able to perform its function.

Therefore, all the applicants shall pay attention to the statement specificity. Information in the application shall be stated in such a way for any third person to be able to reproduce the development, which is being applied for, using the description and drawings.

If the application for an invention is submitted for the period of validity up to 20 years, then Ukrpatent’s expert, if something is unclear for him/her as to the operation of apparatus or element, which is applied for, shall send a request to the applicant. This process makes provision for the unclearly stated moments to be clarified with high probability and executed properly.

But when new utility model emerges, such application shall undergo formal examination, and protective document is issued under the responsibility of developer based on the results of formal examination only. But pursuant to the applicable legislation any person may file a request on examination of the patented utility model. Such examination shall be performed with no dialogue with patent owner, and expert shall make conclusion based on his understanding of application materials only. If this occurs, if any feature is not identified (has no clear understanding of expert based on available prior art), expert may just reject it (afterwards it may be found that this very feature was essential) and draw a conclusion with disregard for the feature.

Whether to prepare application by yourself or to seek for the help of professionals

There are experienced inventors, who write applications quite good, but it is better when this work is done by the experts of this field.

The most civilized world-wide accepted way, – to make use of services of patent agents. However, it is commonly known that not everyone can afford such an option, considering the lack of funds. Services of patent agents are quite expensive, therefore people learn to do this work by themselves.

But, Ukrpatent can offer yet one way to help to applicants. The institute has special subdivision, rendering advisory assistance in preparation of applications and replying to experts’ requests. This is also performed on paid basis, but prices are lower than those of patent agents (prices are available on the website of Ukrpatent).

Moreover, Ukrpatent has consulting office, which provides information to applicants at no charge.

International patent applications pursuant to PCT procedure

Recently, Ukrpatent was granted the status of international search agency. Currently, pursuant to World Intellectual Property Organization (WIPO), this status is confirmed by Ukrpatent once again.

What advantage may the applicant take? The one, who would like to be patented abroad, may file a request to Ukrpatent for international patent search and preliminary international examination (pursuant to PCT Regulations). Thus, the application is accepted, search and preliminary examination are performed not through Ukrainian patents only, but through entire list of PCT minimum bases, available on WIPO website.

Having waited for the results of such search and preliminary examination, the applicant will see if there is any sense to continue this process, and being confident he/she will be able to file applications in such countries, in which he/she is interested to have his/her development implemented.

Whether one can patent software

According to both Ukrainian and world legislation, it is impossible to obtain patent for software. But it may be protected as the intellectual property. Protective document as the copyright object for software shall be obligatory obtained – this is the traditional international practice.

Complex protection of intellectual property

Experts recommend for the applicants to perform complex protection of their developments. Classic intellectual property protection option – throughout objects. Software – as the copyright object, apparatus – as the patent for invention, and logo – as the trademark.

Example in this case may include any vehicle. Hood ornament – trademark, design – industrial sample, and apparatus that make the vehicle move, – are the inventions and utility models.

Protective document as the copyright object for software shall be obligatory obtained

Whether the existence of patent in Ukraine may prevent from the obtaining of patent in another country

Indeed, in some countries the author may be set against his/her application submitted in other countries. But Ukraine is not yet in the list of bases, which shall be checked pursuant to WIPO standard by all patent authorities. Our country in not in the obligatory list.

The Russian Federation is the only country considering Ukraine at the level of patents.

But to be sure that there will be no problems in this matter, the inventor, in case of need, shall submit applications in other countries at least 12 months before the application submission in Ukraine.

In which  field we currently have the largest number of applications

This statistics is changing. Currently, due to the fact that our country is in the state of war, the largest number of applications is submitted for the invention of useful model in the field of fast moving consumer goods.

Registration indicators of protective documents for industrial property objects in the I quarter of 2013 – 2017
Industrial property objects 2013 2014 2015 2016 2017 2017 as a % of 2016
Total registered 7,101 7,278 5,775 6,144 7,067 115
Inventions 975 863 747 680 676 99.4
Utility models 2,447 2,309 2,034 1,872 2,198 117.4
Industrial designs 382 543 444 644 620 96.3
Trademarks 3,297 3,563 2,550 2,948 3,573 121.2
International registration pursuant to Madrid system 1,752 2,623 2,141 1,993 1,690 84.8

Source

Number of developments within such powerful sectors of national economy as heavy engineering, machine-tool building significantly decreased. This is caused by the current state of Ukrainian economy.

Moreover, in some departments foreign applications predominate. For instance, 95% of pharmaceutics department work – is the work with applications from other countries, and we may observe the result of this in the pharmacies.

The similar situation with a large number of foreign applications is in the field of IT.

Patents owners shall be more actively engaged in a dialog with investor, shall be more opened

 The patent shall be used for its designated purpose

For over several years Industrial Property Exchange exists in Ukraine. And for all the time not a single transaction was entered into through it.

Only once or twice foreign investors were interested in the developments of domestic inventors. It is known that the inventor himself became an obstacle in one of the cases. At first he set strange conditions to the investor, and then he decided not to transfer his achievements to anyone. As the final result he failed to implement it by himself.

It is evidence that our inventors very often work in the old manner – receive patent for it to hang on the wall. But patent is the same ownership as the vehicle or apartment. It shall be fully used for its designated purpose. Patent – is the item of merchandise. It shall work for its owner, otherwise even the possession of it is burdensome.

Patent owners shall be more actively engaged in a dialog with investor, shall be more opened.

To obtain a patent – this is only the part of the deal, which may be made with the help of Ukrpatent. Patent owner is the one, who shall implement it and make it fully deployed within 20 years.

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