Many businesses had to adapt to the new realities of doing business after the full-scale war between Russia and Ukraine had started. Currently, they face the issues of entering new markets, developing new areas, ensuring autonomous operation, etc.
Intellectual property protection has become more relevant than ever. Since, in addition to supporting and protecting current areas, business and technologies, it is necessary to protect and properly formalize new areas and expand protection.
In this article, we will consider the features of intellectual property protection in Ukraine during martial law.
Starting with statistics
The process of protecting intellectual property rights does not stop after the war started, and the field has been actively functioning to protect the interests of right holders and all stakeholders.
For example, in 2021, 3,393 applications for inventions were submitted, and in 2022 – 2,759 applications. We’d like to remind you that the full-scale invasion by Russia began on February 24, 2022, and despite military challenges and difficulties, the number of applications has remained almost unchanged. Over 23,000 applications for trademarks were submitted in 2022. We see that the statistics are not only recovering, but can also increase. The exact figures of submitted applications and registered items can be found on the website of the Ukrainian IP Office.
In addition, many investment and grant programs that support and stimulate the development of new or existing businesses have been started. For example, over 250 requests for investment opportunities in Ukraine, as well as project and trade cooperation proposals, were submitted to the Advantage Ukraine investment platform alone.
Specifics of committing actions in the field of intellectual property in Ukraine
Format of filing registration applications
Applications can be filed in two ways. The first is on paper – these applications can be sent by mail or submitted in person to the department. The second is in electronic form using special software. In our opinion, electronic filing is more convenient due to no need to involve post, print documents, as well as to to the ability to track applications from a personal account. In addition, when filing applications electronically, the application fee is reduced by 20%.
Suspension of time limits
Meeting deadlines regarding intellectual property is an extremely important aspect for successful registration. After the war started, special laws suspending the time limits for most processes were introduced. The changes were introduced by the Law of Ukraine “On the Protection of the Interests of Individuals in the Field of Intellectual Property During Martial Law…” dated 01.04.2022.
The purpose of time limit suspension is to prevent the loss of IP rights during the period of martial law, when the rights and freedoms of citizens may be limited and restrictions may be introduced for legal entities. The time limits for term suspension shall be from February 24, 2022, i.e., from the day of martial law in Ukraine, and until its abolition.
Actions for the execution of which the time limits have been suspended – filing an objection to the application or action of the international registration in Ukraine, renewing the overdue time limits, appealing the IP office decision on the application in court or to the Appeals Chamber, filing an application for invalidation of the invention rights, paying fees, etc.
Time limits for execution of actions shall be for the duration of martial law and within 90 days after its abolition. In fact, the time limit suspension is the provision of additional legal guarantees for business and the creation of the necessary conditions for the preservation of existing investments.
National and international registrations
National and international applications go through the registration process without significant changes during martial law. However, the IP Office of Ukraine currently does not take actions regarding companies related to aggressor countries.
Reforming the IP body and other innovations
The intellectual property authority works stably during the war. Moreover, in October 2022, Ukrpatent reorganization began aimed at creating a full-fledged National Intellectual Property Authority to ensure additional transparency of the procedures for acquiring and disposing of IP rights, to introduce an effective mechanism for the protection of rights, to reduce corruption pressure on business, etc.
The IP office operates on the basis of the order of the Cabinet of Ministers of Ukraine dated October 28, 2022 “Some Issues of the National Intellectual Property Authority”. Currently, the priority areas of the authority’s activities are the professional representation of Ukraine’s interests at WIPO, introduction of extensive digitization of the processes of providing public services by the IP Office, active educational activities and raising the level of IP culture, the maximum reduction of the terms of consideration of applications for obtaining legal protection of IP items, improving the quality of IP examination, etc. In addition, the office plans to implement a full-fledged Mediation Center. This is a new tool for the Ukrainian intellectual property system operating in all developed countries around the world. It will help creators, inventors and businesses in resolving disputes.
During the martial law period, the formal requirements for filing documents were simplified; namely, by allowing the submission of applications, statements, petitions and objections through electronic systems or via e-mail using scanned copies of QES-certified documents.
Amendments to legislation
The updated Law of Ukraine “On Copyright and Related Rights” was adopted, which contains many novelties; namely, orphan works, rights to non-original works, destruction of an architectural object without warning, and others.
In addition, the legislation on patent attorney attestation, the work of the appeals chamber and other specialized institutions is being updated.
It is proposed to prohibit the use for marketing purposes the names associated with military operations, war events, settlements and places that have become symbols of heroism. In addition, names of military units, names that reproduce the official greeting of the Armed Forces, manufacturers and types of weapons. The draft law will not apply to already filed applications due to the fact that it will not have retroactive effect in accordance with Article 58 of the Constitution of Ukraine.
The issue of working with objects related to the Russian Federation is being studied. Accordingly, applications for trademarks and patents may be withdrawn if, during the examination, it is found that the application was filed by a person related to the aggressor state. The certificate may be invalidated based on a court decision at the request of any person as contrary to public interest. If the agreement on the disposal of property rights concerns an object whose owner or legal successor is a person related to the aggressor state, this transaction will be considered null and void. Property rights held by a person associated with the aggressor state may be forcibly confiscated for reasons of public necessity in favour of Ukraine. Property rights may also be subject to special economic sanctions and be transferred to other person for management. Information about property rights held by persons related to the aggressor state will not be entered into the register, except for information about the termination of these rights, the application of sanctions against them, etc. The laws on these aspects is awaiting final amendments.
Protection of intellectual property in court
Courts continue to operate as usual, but subject to wartime security measures. It is possible to participate in the court session through the personal presence of the parties or their representatives or via video conference. Procedural documents can be filed using the E-court service, as well as by mail. Moreover, the current legislation of Ukraine provides for the use of both conventional and electronic evidence. Most cases related to intellectual property issues cannot do without electronic evidence, which may include information from the Internet, certain facts and circumstances, etc.
In 2022, 334,950 claims were considered in litigation, while in 2021 – 593,430. Despite the decrease in the number of cases considered by courts, maximum conditions were created to be able to appeal relevant decisions and actions of the IP office not only to the Appeals Chamber, but also to the court on the grounds of not taking into account the provisions on time limit suspension.
It is worth mentioning that, as a general rule, it is necessary to engage a lawyer to represent interests in court. The legal basis of the activity of the bar in Ukraine is the Constitution of Ukraine, whose Article 59 specifies that the bar acts so that to ensure the right to protection from accusation and to provide legal assistance when resolving cases in courts and other state bodies in Ukraine. Bar self-governance is based on the principles of electability, transparency, obligation for lawyers to implement the decisions of bar self-government bodies, accountability, prohibition of interference of bar self-government bodies in the professional activity of a lawyer. The principles of bar self-governance are implemented by the Ukrainian National Bar Association (UNBA).
UNBA takes an active position in the development of the field of intellectual property in Ukraine. In particular, a committee on intellectual property rights was established and operates at UNBA, educational events are regularly held and proposals for improving the current legislation are provided. Among the examples, we can indicate that on February 9, 2023, an international event on the topic “Video Games and Intellectual Property in Europe” was held, which was jointly organized by the regional offices of Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) and the intellectual property committee of the UNBA. During the meeting, lawyers discussed the identification and transfer of intellectual property rights in IT, what can be protected in computer games, the strategy of litigation in Hungary and the ADR system in Italy.
In addition, in April 2023, an UNBA working group on the legal regulation of artificial intelligence (AI) and the development of recommendations for national legislation in this area was established.
Conclusion
Martial law is not an obstacle to the protection of intellectual property rights. Filing of applications has not stopped and can be done by the applicant online or on paper. The legislation amendments have simplified the process of filing documents and provide an opportunity to suspend the time limits for committing actions related to intellectual property objects.
The war has not become a reason to stop or curtail the process of reforming the sphere of intellectual property. The introduced changes make it possible to complete the process of reforming the intellectual property system, and the IP office in Ukraine operates properly.
To resolve disputes, should it be impossible to resolve them through negotiations, it is possible to refer to the appropriate court according to the rules of jurisdiction. For the proper representation of the interests of the parties in court and the provision of legal assistance, the Institute of Advocacy operates, the activities of which are managed by the Ukrainian National Bar Association based on the principles of bar self-government.