The NIPO is established under the Ministry of Economic Development, Trade and Agriculture and forms with it a two-tier system of IP administration:
- Ministry – will ensure the formation and implementation of state policy in the IP field;
- NIPO – will substitute the Ukrainian Intellectual Property Institute and will perform public functions for the implementation of state policy in the field (applications prosecution and issuance of protection documents (patents, certificates); certification and registration of patent attorneys, etc.).
What other important changes does the Law provide?
- Establishment of a collegial body of NIPO – the Chamber of Appeals.
In comparison with the current Chamber under the Ministry, the powers of the NIPO Chamber of Appeals will be expanded, and in addition to consideration of:
- objections against the decisions of the NIPO on the acquisition of rights to IP objects, and
- applications for recognition of a trademark well known in Ukraine,
the Chamber of Appeals will also be considering applications for invalidation of rights to IP objects in whole or in part.
- The possibility of using an electronic signature by NIPO is another advantage prescribed by the Law. It is planned to use the electronic signature to provide extracts and statements in electronic form.
What does this mean for the right holders?
Most importantly, the disputes on the patents and certificates invalidation will be considered not only by the courts but also by the NIPO Chamber of Appeals.
Since the IP court is not functioning in Ukraine yet, the courts are overloaded, and the IP requires specific expertise in the field (which usually results in the necessity of the experts’ opinions obtaining). In our mind, it should be quite an improvement in the sense of consideration time at least. What is more, as we predict it will help to fight with patent trolls more effectively.
Additionally, e-communication with NIPO is expected to be faster, and most importantly more accessible, which in some cases matters a lot.
“So when will it all work?” you ask.
Currently, the Law is in the process of being signed by the President. As soon as this stage is completed successfully (the President has 15 days for consideration) – the Law is officially promulgated and enters into force three months after its publication.
Of course, passing the Law is only the first step and there are still questions to be answered. That’s why we will keep you informed of developments!