IP filings up after a drop in 2022 – IP office presents annual performance indicators
Despite the difficult conditions and the ongoing war, the intellectual property sector is not only recovering, but is also developing steadily. This is evidenced by the data of the information dashboard with key performance indicators for 2023 published by the IP Office.
Last year we observed a significant increase in intellectual property activity. The growth in filing rates for industrial property rights in 2023 is a clear indication of the intensification of the inventive community and business and is a result of positive expectations regarding the development of the economic, political and social situation in Ukraine.
In comparison to 2022 we can see the following increase in applications for industrial property rights:
- for inventions: +5.5%;
- utility models: +47.4%;
- industrial designs: +34.8%;
- trademarks: +55.4%.
Taking trademarks as an example, the increase in filing trademark applications by foreign applicants is 18,2% in 2023 compared to 2022. Such statistics shows that responsible businesses remember the importance of registering trademarks as well as other intellectual property objects. It is no mystery that it is much cheaper and easier to duly protect your intellectual property by duly and timely filing the applications than protecting your rights in courts in case your trademark or similar one is registered by third party.
IP deadlines – issue that causes questions during the martial law
The Martial Law adopted in 2022 among other issues also influenced the sphere of intellectual property. The special law provisions that regulate deadlines and terms in the intellectual property field provide that all the deadlines and terms for the applicants and owners are suspended till the martial law is abolished or terminated. Meanwhile, in accordance with the mentioned law provisions, the rights holders and applicants may submit documents during 90 days after termination or abolition of the martial law.
At first sight the provisions are quite clear and protect the rights of intellectual property holders.
However, one should remember that the IP Office cannot suspend all the procedures for acquiring the intellectual property rights and their renewal/maintaining in force for the indefinite time since the IP sphere can be paralyzed: the new applications will not be registered, trademark registrations and patents for inventions will not be renewed, etc.
The issue is that the terms for the applicants for submitting responses, requests, extensions and renewals are really suspended and flexible. If the owner did not duly renew the trade mark registration for some reasons, the registration will be still valid and the owner can pay the renewal upon the expiration of the renewal deadline even without extra official fee that is prescribed for payment during renewal at the grace period.
Consider one more situation, in particular, submitting the opposition against trade mark application. In accordance with the trademark law any third party can submit the opposition within three months from the publication of the target application in the official UA IP Office bulletin. However, given the provisions of the law regards the suspended deadlines such oppositions can be submitted later than three months.
The problem is that some interested parties to some extent can abuse the law on suspended terms and file the opposition too late, even after the completion of the substantive examination when the decision has been already issued. In case the IP Office receives such opposition after the examination is already completed, it cannot neglect such opposition since it will contradict the provisions of the law on suspended terms. Such cases have already happened and the practice of how to act in such cases is now being developed by the IP Office. Among the latest updates, IP Office issued the explanation that even the examination on trademark application has been completed but the official fees for registration of a trademark have not been paid by the applicant yet, such opposition will be considered by the examiner.
This situation shows that despite the suspended terms the applicants and owners must carefully keep a
close watch on deadlines. The procedure of trademark examination takes more than a year and there is plenty of time to submit the opposition during the stage of examination and not to establish precedent.
But even in such extraordinary cases the IP Office keeps within the law and tries to satisfy the demands of all the interested parties.
It is worth mentioning that for the moment there several law drafts are being considered to make amendments to the law regulating deadlines for the purpose of establishing precise deadlines for certain action in IP sphere. As soon as one is adopted, the IP community as well as Ukrainian and foreign businesses will be timely informed on the approved changes.
Appeals Chamber finally restarting its work
New regulations of the IP Office Appeals Chamber came into force in February 2024.
For the present moment organizational and legal measures are being completed to form the staff of the Appeals Chamber of the IP Office. After the Appeals Chamber staff is approved, the work of the Appeals Chamber will be resumed.
The following key provisions of the new version of the regulations of the Appeals Chamber shall be admitted:
- the possibility of considering objections to decisions on the acquisition of intellectual property rights under a simplified procedure;
- the possibility of conducting mediation at any stage of consideration of an opposition or appeal;
- the simplification of the procedure for consideration of appeal claims on invalidation of intellectual property rights;
- the simplification of the requirements for the survey on recognition the trademark as well-known in Ukraine;
- the possibility of creating a personal account in the informational and communicational system of IP Office by the participants of the proceedings for submitting documents in electronic form with aqualified electronic signature;
- the possibility of storing video and audio recordings of video conferences in the informational and communicational system of IP Office.
As can be seen from above, a lot of novelties has been implemented and now the IP community waits for the Appeals Chamber to restart its work to test them out.
Project concept of the National Strategy for the Development of IP in Ukraine was presented during World IP Day
The intellectual property sector is important primarily because it permeates other industries. That is why today it is extremely important to define a strategic vision for the development of the intellectual property sector, to understand where the global market is heading, what is Ukraine’s place in this global paradigm, and what our country can do to be the first.
Prerequisites for the development of the National Strategy and methodological principles were
introduced at the World IP Day by Ms. Olena Orliuk, the Head of the UA IP Office.
She also noted that the national strategy will consist of the following blocks:
- Ukraine – Intellectual Property – European Union;
- Development of international cooperation in the field of intellectual property;
- IP community;
- Formation of culture and respect for intellectual property;
- Protection of intellectual property rights;
- Innovation ecosystem and IP economy.
According to the Head of the IP Office, a series of sectoral meetings will soon start to discuss individual blocks of the draft Strategy in more detail.
Ukrainian IP Office – new lease of life
As has been outlined above, the IP Office in Ukraine is working in full force. As can be observed, there is a tendency to reducing of the timeframe for examination of IP objects which is gratifying. The IP Office organizes and holds lots of online and offline meetings between representatives and examiners of the IP Office and representatives of the IP community to discuss key IP issues. The active participation of IP Office in WIPO committees as well as development and implementation of Governmental by-laws cannot be overlooked.
In early June the representatives of the IP Office joined the sessions of IPF-2024 (Intellectual Property Forum) dedicated to technologies, innovations and IP rights protection as well as hold Sectoral Discussion of the Block “Protection of Intellectual Property Rights” of the National IP Strategy Draft.
All initiatives of the IP office are aimed at ensuring compliance of the intellectual property sphere with international standards and meeting the needs of applicants and owners with the most professional approach.