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18 July 2019

Hike of official fees for filing, prosecuting, and maintaining intellectual property in Ukraine as of 19 July 2019

Throughout the past year, there has been speculation over the potential increase of official fees for filing, prosecuting and maintaining intellectual property in Ukraine. Finally, the first days of summer brought the awaited increases. Despite the fact that most of the fees were doubled, tripled, or quadrupled, the increases are not drastic and fees remain comparatively small.

On 12 June 2019, the Cabinet of Ministers of Ukraine introduced changes to existing regulations pertaining to the official fees for filing, prosecuting and maintaining both copyright and industrial property objects. These changes include increases in the current official fees as well as the introduction of new fee arrangements for the official fees. Below we briefly summarize the changes rights holders should be aware of. You may also wish to download an updated SK Fee Schedule or use our updated e-calculator for the purposes of calculation of trademark filing costs.

The increased fees come into effect on 19 July 2019.

Some new developments

The very first change that catches an eye is the introduction of different filing fees for inventions and utility models. For nearly 25 years, the Ukrainian IP Office charged the same fees for these IP objects. What’s interesting is that the filing fee for the utility model is now higher than those assigned for inventions. From a purely practical standpoint, we understand that the CMU decided to introduce higher fees for utility models in order to put monetary pressure on bad faith applicants who choose utility models as their weapon of choice in local patent trolling practices.

Another novelty for inventions and utility models is the introduction of a so-called “excess pages fee”. This specific fee will apply if the description and drawings of the application for invention or utility model exceeds 100 pages. In such cases, the applicant should pay a minor extra fee for every 50 additional pages.

There are also fee updates for designs. Specifically, the changes to the schedule of the official fees make it possible to maintain valid design patents in Ukraine for 25 years. This opportunity appeared in Ukraine upon signing the EU-Ukraine Association Agreement. The Association Agreement provides for a 25-year period of design protection, while national legislation envisages a maximum 15-year term. The official fees prior to the increase reflected the provisions of national legislation. As a result, rights holders were only able to renew their design patents for 15 years. In turn, the updated official fees regulations provide the possibility to pay annuities for 25 years and keep designs valid much longer. Nevertheless, Ukrainian design law still needs to be amended in order for rights holders to execute their right to pay annuities for the 16th year of validity and beyond.

Additionally, recent changes to regulations have introduced new practices regarding extensions and renewals of procedural deadlines. A key difference between the existing and new official schedules is the introduction of “intermediary” terms. For example, the existing schedule of official fees allows for the extension of deadlines to respond to any provisional trademark application refusal up to six months dependent on payment of one minor fee and a formal extension request. The new official fees make it possible to extend the deadline to respond to provisional refusal either for three or more months. In practice, this means that the trademark applicant may choose a three-month extension if appropriate (and pay a lower official fee), or get a six-month extension immediately (and pay a higher fee). It looks like these options may be combined.

Some updates

In addition to new fees, most current official fees will see some increases. As stated, most existing fees were increased from two up to four times. For example, the official fee for a black and white trademark application in a single class was the Ukrainian hryvnia equivalent of about EUR 33. Under the new regulations, this application will cost the Ukrainian hryvnia equivalent of about EUR 133.

Additionally, certain official fees underwent significant increases during this round of changes. This mostly pertains to invention patent annuities which were increased from the Ukrainian hryvnia equivalent of about EUR 126 to be paid in 25th year of patent validity, to EUR 1,015 to be paid the same year.

Implementation timeline 

As stated, the updated regulations will come into effect on 19 July 2019. Until the indicated date, previously existing fees should apply. It remains unclear which fees will apply for applicants who filed applications while old fees were effective but who obtain intellectual property protection once the new fees are already in force. Further clarifications and official guidance are expected from the Ukrainian IP Office.

IP Office discounts 

New regulations governing official fees prescribe a 20 percent discount for filing applications electronically. This discount applies to filing only and does not cover other procedural actions related to the prosecution and maintenance of registered intellectual property rights. The Ukrainian IP Office encourages applicants to go “electronic” but still paper applications remains the dominant form of communication with the Ukrainian IP Office, according to their reports.


Potential
implications

The Ukrainian IP Office website explains the recent fee changes as part of efforts to modernize the service and bring fees into line with the current economic realities in Ukraine. According to the IP Office, increased fees will provide the extra resources necessary to boost the quality of services the Office provides with respect to intellectual property registration, prosecution, and maintenance, as well as to maintaining an internationally competitive fee structure.

In terms of potential implications, we believe that the official fees increase should not significantly affect IP-driven businesses looking to protect their intangible assets, but should serve as a deterrent for bad faith applicants seeking to grab intellectual property. We also hope that increased official fees will help the Ukrainian IP Office increase the quality of its services.

What’s next?

In addition to the official fees envisaged by the updated regulations, the Ukrainian IP Office also provides a suite of paid services (e.g. provision of application materials upon request; expedited examination of trademark applications, etc.) that is not charged according to the updated regulations. These fees are regulated by internal documents of the Ukrainian IP Office and remain unchanged so far. However, we expect the Ukrainian IP Office to increase these fees in the near future.

 

For further information and to get our updated schedule of fees, please contact Yaroslav Ognevyuk or Oleg Klymchuk or Pavlo Kovalchuk.

Information contained in this legal alert is for general information purposes only, does not constitute legal or other professional advice, and should not be relied upon as a substitute for specific professional advice tailored to particular circumstances.

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