Methods of Technology Protection in Ukraine

Stanislav S. Lobko

Unfortunately, it is a common situation in Ukraine when a scientist who develops a certain innovative technology does not pay appropriate attention to protection of his intellectual property rights. That usually results in impossibility of gaining fair reimbursement of material and labor recourses invested into the project and also impossibility of gaining fair revenue from his work.

In this respect we are about to make a brief guide for inventors who takes care of their creatures and have a will to obtain an adequate protection to their rights.

Basically there are two general concepts of technology protection:

— disclosure — when an inventor reveals the essence of his technology to the community with the state-provided prohibition to use it (or its analogue) without an inventor’s permit by obtaining a patent;

— concealment — when an inventor keeps technology as a commercial secret (i.e. know-how) with it being impossible for third parties to get access to the nature of the creature.

Choosing one of the said concepts it’s necessary to keep in mind that concealment is non-viable in case when:

— marketing of the output using a new technology is planned; and

— the essence of technology may be easily identified by scrutinizing the product.

Also when the essence of the invention may not be kept in secret on account of the other circumstances (e.g. personnel turnover, assumptive obviousness of the invention for specialist, etc.) concealment is not preferable.

Meanwhile, if the inventor considered it as an appropriate one it’s necessary to carry out a list of actions in order to provide the creature with security:

— developing a list of data which should be deemed as a commercial secret;

— concluding non-disclosure agreements with commercial partners, clients and personnel (in the last case it’s important to tie such agreement with labor contract or/and labor order rules);

— taking adequate measures regarding keeping technology in secret (e.g. issuing orders on establishing particular rules of access, usage and transferring, putting limitations on the circle of personnel who may work with it, etc.).

One of the effective measures for protecting commercial secrets is depositing several documents with a notary, who is not allowed to render them to third parties. This may secure information indicated in such documents from leakage because of uncontrolled handling.

Substantial advantages of choosing concealment as a method of technology protection are:

— lack of necessity to interact with state bodies;

— short time of taking appropriate measures;

— possibility to broaden the subject of technology without necessity to obtain additional permits/other documents from state bodies.

On the other hand the important disadvantage of such a scheme is the probability of leakage which would result in practical impossibility to protect intellectual property rights because of two reasons:

— a third person may refer to lack of its fault regarding obtaining the commercial secret which should result in impossibility of claiming damages;

— a third person may refer to the fact that the arguable information has lost the status of a commercial secret because of such leakage which should result in impossibility of state guaranteed prohibition to use the technology.

The said problems may be solved by applying the other method of technology protection — patenting. The main concept of it is to disclose invention with the purpose to show the third parties what they are not allowed to use without a special permit.

To obtain a patent as a title of protection inventor should submit an application to the specially authorized body — State Service on Intellectual Property (hereinafter — SSIP) — which is about to verify the bulk of documents rendered and carry out expert examination of the invention which may result in issuing/refusal in issuing a patent.

There are two basic patentable objects:

— invention;

— useful model.

The main difference is that to be patentable an invention should meet 3 criteria — novelty (i.e. at least some aspects of its must be new), industrial application (i.e. susceptibility to industrial purposes) and inventive step (i.e. it should not be obvious for the specialist in a certain area) while useful model may meet only two of them — novelty and industrial application.

Since the invention is regarded as more profound the law:

— grants twice as long for its legal protection (20 years instead of 10 years for useful model) and

— allows inventors to combine several connected technologies within single patent which is not allowed in case of useful models.

Nevertheless, the procedure of obtaining a title in case of invention is much more complicated: the inventor should take not only the stages of preliminary and formal expert examination (where the being of patentable subject matter, date and other procedural issues are established) but also a stage of substantial expertise.

This last stage is connected with examination of novelty, industrial application and invention step of the invention which are not controlled in case of useful model patenting. Thus, the approximate time of obtaining patent according to the general procedure may extend to three years while the same time in case of useful model patenting should be approximately one year. Moreover, requirement of completion of substantial expertise stipulates a bulk of significant risks of refusal which is minimal when such examination is not needed.

All the stated results in a situation when the main ground of choosing the type of patentable subject matter (invention/useful model) is connected with the reasons of time limits and risks but not with the essence of objects. The lack of substantial expertise also results in frequent infringement of rights of previous inventors by issuing of such useful models. That is explained with the fact that possible intersection between the previous patents and further (filed) application may be indicated only through patent search which is carried out by a specialist on the stage of substantial expertise.

That’s why when obtaining a patent to a useful model you can’t be fully confident that you won’t be taken to court by the person whose intellectual property right may be infringed. Moreover, you can’t be fully confident that similar patents to similar inventions wouldn’t be issued. However, the first problem may be solved though claiming to invention (not useful model) patent while the second one could be solved only through regular searching of similar patents on the official patent web-resource1 with the opening of a case in future against an infringer.

Obviously this problem occurs because of current state legislation granting useful models with a list of mentioned benefits which doesn’t exist in other countries.

What is necessary to know about procedure of patenting in Ukraine? Here we list useful issues to take into account.

Only a product (e.g. facility, substance, etc.) or process may be an object to patenting. As was said before you may combine several inventions related to the common idea into a single patent to invention while there is no similar right in respect of useful model.

There are several objects which may not be protected with patent: sorts of plants, breeds of animals, biological processes of reproduction, industrial designs and chip topographies. They may be registered and protected according to the other legal institutes. It’s also hard to patent computer programs which are protected by copyright; meanwhile, it’s basically possible to protect an algorithm embedded into the software as a process.

The person who has formerly obtained patent in the other member state of the Paris Convention for the protection of industrial property and claims patent in Ukraine during further 6 months is granted with so-called patent priority. That means the application of such person would be deemed as preferential before those filed before it was filed in Ukraine but after it was filed in the said state.

The person who has disclosed the essence of invention during the 6 months prior to filing the application is granted with so-called author priority. That means the said information which was disclosed may not be set off against the claim as a part of prior art which might cause refusal in patent issuing on grounds of lack of novelty.

When creating a formula of invention/useful model it’s necessary to consider that such a formula determines the extent of legal protection. Therefore, the complex of characters included, on the one hand, should fully indicate the essence of invention and on the other hand, shouldn’t limit legal protection on account of excessive specification. In this context it’s necessary to remember that the patent rights are considered as violated only in case when each character of an invention was used illegally.

After carrying out formal examination but before substantial expertise and issuing of a patent the inventor is granted with so-called temporary protection. The rights of such temporary protection are similar to the patent rights but may be fully used only after the patent is obtained.

Payment of state duty for the issue of a patent halts a series rights (e.g. altering or recalling of application, lodging complaints to the Chamber of Appeal of SSIP, etc.). That’s why we recommend contributing this payment only after obtaining a positive decision from the SSIP related to issue of a patent.

The person who doesn’t agree with the decision on issuing/refusal of issuing of patent has a right to file an appeal to the aforesaid Chamber of Appeal of directly to the administrative court. Such an appeal should be submitted not later than after 2 months from the date of receipt of the decision.

In order to maintain the validity of patent its proprietor should contribute to the budget a certain amount of money annually. If such payment is not made the patent becomes ineffective after a period of time.

So, having a purpose of legal protection of your technology we advise you to scrutinize all the positive and negative issues of different mechanisms which should inevitably result in substantial benefits in the future.