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Contents of this page:
1. What is a Patent or Utility Model?
2. What is a Patent for an Invention or Utility Model
3. Why patent inventions or utility models
1. What is a Patent or Utility Model?
Invention (utility model) is the result of human intellectual activity in any field of technology that meets the requirements of patentability.
A product, process,or a new application of a known product or process can be patented as an invention or utility model.
Examples of a product as an object of technology:
Devices, mechanisms, complex of interacting devices, structures, products, substances, microorganism strains, plant and animal cell cultures, as well as other biological materials.
Examples of the process as an object of technology:
Production, processing, processing of the product and its quality control, transformation of matter, energy, data, measurement of parameters, diagnostics, treatments, control of the process, which is the object of technology.
The invention meets the conditions of patentability if:
-
It is new;
has an inventive level; and
It is industrially viable.
A utility model meets the conditions of patentability if:
-
it is new; and
industrially viable.
Exclusive property rights to an invention (utility model) arise and are protected by the State subject to their registration (issuance of a patent). Without registration, there is no protection of the invention.
The rights to an invention (utility model) are protected only in the country where the patent is issued. That is, you need to patent in the country or countries where you want to get protection.
2. What is a patent for an Invention or a Utility Model
An Invention patent (utility model) is a protective document certifying the existence of intellectual property rights to solutions in the field of technology to the extent determined by the data entered in the State Register.
A Patent is State Documentation of a prescribed form. It is issued by a specially authorized body of the State in the field of Intellectual Property — the Patent Office. In Ukraine, this is the National Intellectual Property Authority (formerly Ukrpatent).
A Patent is the object of desire and pride of any inventor, it is an opportunity to earn, invest, conquer a new market, and optimize taxation.
But there is one pitfall for both the patent owner and the acquirer of rights - the main thing is not specified in the patent - Whether the patent is "Strong" or "Weak". Most often, patent owners do not find out about this immediately. Patent owners only discover this when they have to defend their rights in case of infringement, or when they are presented with a claim.
The main goal of the Patent and Legal Agency "DESTRA" when providing patenting services is to obtain a really strong patent for our Client, which provides the maximum protection of intellectual property rights.
3. Why patent inventions or utility models
1. Obtain a monopoly on the market — i.e. obtain the exclusive right to produce a product or implement a method (for example, a method of food preparation, manufacturing, medical treatment, metrology, data processing, crop cultivation, materials processing, energy production, mining, mineral extraction, etc.) , eliminate competitors by obtaining the exclusive right to use, the right to prohibit use and the right to allow use (licensing).
2. Avoid problems in the case of patenting a similar solution by another person — competitors can develop in one field, and someone can get a broad patent that includes many fields.
3. Capitalization of the enterprise — increasing the value of the enterprise by evaluating and placing the asset on the balance sheet.
4. Opportunity for the Inventor to be rewarded - the inventor can receive a bonus from the employer or issue a license to use the patent and receive royalties.
5. Reputation Benefits: popularity or satisfaction of non-material needs - an individual can get a patent to mention it in a thesis, resume, or include in a portfolio; a legal entity can use a patent to support their reputation, advertising, and increase public goodwill.
6. Possibility of Optimization of Taxation - reduction of the tax base by placing the object of intellectual property on the balance sheet and calculating depreciation; the possibility of paying money to the manager and the founder in the form of royalties (with the calculation of personal income tax without VAT); remittance of royalties abroad (tax on repatriation of income does not arise if the object of intellectual property is registered to a foreign entity from the very beginning).
7. The possibility of involving international patenting procedures in other countries — the use of the Ukrainian application as a basis for further patenting in other countries with priority according to the date of submission of the Ukrainian application (an international application is submitted within 12 months, without a Ukrainian application it is not possible to apply for border).
8. Advertising as a result of the publication of a paten — the possibility of conveying information to those who want to purchase rights (license), as well as to those who should be scared (potential competitors).
9. Replenishment of the level of technology — with the help of a broad and robust description, you can replenish the level of technology and make it more difficult for competitors to patent similar objects.
For example, we patent a specific needle “zinger”, in the description we describe many options: what can be similar needles, even those that do not fall under the formula (without specifying them in the formula), so we eliminate the possibility of competitors patenting such things, because what is described in the description and published will become known at the time of publication, so if someone were to patent what is described, it will not be patented for lack of novelty. At the same time, such an extended description will not affect the comparison, because the evaluation and comparison is carried out according to the claims of the invention (utility model).
How Do I Register a Patent (Utility Model) in Ukraine with Destra Patent Law Firm (Steps, Costs)?
Drafting and filing a patent (utility model) application involves at least 8 stages of meticulous work aimed at shaping the scope of protection of the invention based on the customer’s targets.
Step 1. Confidentiality AgreementAny information on patentable subject matter, applicant and inventor is confidential. Part of this information (namely, which is eventually included into the application) remains confidential until the patent (utility model) application is published. All other information (which was disclosed by the customer while drafting the application but eventually not included in the application) remains confidential even after the application has been published.
The DPL’s confidentiality obligations are set forth in the Confidentiality Agreement to be signed by DPL prior to getting started with receiving information from the customer and drafting the patent application.
The status of a patent attorney implies the obligation to keep the information received from the customer confidential. However, the conclusion of a confidentiality agreement regulates the patent attorney's obligations in more detail than is described in the law. With a non-disclosure agreement signed by the patent attorney, the customer feels more protected when disclosing sensitive information about the subject of patenting to the patent attorney.
Having signed the confidentiality agreement, DPL proceeds to the following steps.
Step 2. Invention Disclosure Form
Options for designating the Applicant (future patent owner):
The applicant (future patent owner) can be:
-
Physical person or legal entity. Each of the options has its advantages and disadvantages. In particular, physical a person can license another person and receive royalties. A legal entity can evaluate an object of intellectual property and put it on the balance sheet.
One or more individuals/entities.
Rules to follow when designating the Applicant (future patent owner)
The following persons should be designated as the Applicant:-
Inventor — if the invention was created independently by the inventor (not as an employee), or, if as an employee, where the employer refuses to patent;
Employer — if there is an agreement on allocation of rights to the invention between the inventor and his/her employer, and the right to file the application has been assigned by the employee to the employer;
Both Inventor and Enployer — if there is no agreement on allocation of rights to the invention between the inventor and his/her employer. If there is no such a contract – should the inventor be not designated as the applicant – the inventor may file a claim to invalidate the patent on the ground of infringement of his/her rights.
Recommendations:
Before starting the patenting procedure, it is recommended to conclude an agreement on the distribution of rights between future patent owners (applicants), if there are several of them, as well as to formalize relations with the investor (if any).
Without the conclusion of a contract between the applicants, each of them, after obtaining a patent, can independently use the patent at their own discretion, in particular, independently (for example, as an individual entrepreneur) manufacture the patented product or use the patented method. However, if such a patent co-owner wants to use this patent in his own enterprise, he will need the permission of the other co-owners, and this should be agreed in advance, since after obtaining the patent, it will most likely be more difficult or expensive to obtain such permission.
In addition, we recommend agreeing in advance on the procedure for distributing revenues from the issuance of a license to third parties or the sale of rights to a patented invention or utility model, since the contract can establish both the procedure for the issuance of a license or sale, as well as any amount of income of each of the co-owners patent (in the absence of a contract, these shares must be equal).
The importance of concluding a contract between the applicant (inventor) and the investor before filing a patent application
There are cases when an inventor finds an investor to implement his development even before submitting an application for a patent, and he needs funds not only for proving or implementing the development, but also for the patenting procedure. At the same time, on the one hand, the inventor is afraid of disclosing information about the details of the invention to the investor, and the investor, on the other hand, is afraid of investing in proving or patenting the development without knowing the details. In order to divide the area of responsibility, rights and costs between the applicant and the investor, as well as to eliminate the risks of unscrupulous behavior on the part of the inventor and the investor, we recommend concluding a contract that regulates all these issues.
Rules to follow when designating the Inventor
The person (group of persons) who actually invented a product/process as a result of their intellectual and creative activities should be designated in the patent application as the inventors. People who were involved in organizational work or financing should not be considered inventors.
If the inventor and the applicant are different persons (including if the applicant is an employer and the inventor is an employee), before starting the patenting procedure, the inventors and applicants should be correctly identified, an agreement on the transfer of filing rights should be concluded application and distribution of rights to an invention (utility model).
Inappropriate designation of the applicants and inventors does not affect the grant of a patent because Ukrpatent (like patent offices of any other countries) does not verify such information, but this can have negative consequences if an aggrieved person files a claim to invalidate the patent.
Having received the above information from the customer, we discuss the options respecting the designation of the applicant and inventor.Examples:
- When submitting the application, other persons were indicated as inventors - the real inventor can file a lawsuit to declare the registration invalid.
- In the absence of an agreement on the distribution of rights between the employer and the employee, the employer independently submitted the application, indicating the inventor only as an inventor, but not as a co-applicant - the employee can file a lawsuit to declare the patent invalid.
In order to avoid disputes, claims and lawsuits, all relationships between these persons must be regulated by appropriate contracts before submitting an application to prevent possible invalidation of registration based on the violation of the rights of any of these subjects.
Invention details are more complex and time-consuming. These are analyzed by us and discussed with the customer at the following step.Step 3. Identifying Patentable Subject Matter, Drawing up the Requirements Specification
Time to completion:
We analyze the invention details, disclosed by the customer, within 5 working days. Where needed, we draft clarification questions and analyze new answers. Once invention details are sufficiently disclosed so that we can perform the patent search and draw up the patent application, we sign the Patent Application Requirements Specification, and go on to the following steps.
| Description | Вартість, грн. | |
| 10201 | ATTORNEY'S FEE for analysing the initial information provided by the Customer to identify patentable subject matter and draw up the requirements specification for the patent application — coefficient 1 | 3750.00 |
| 10202 | ATTORNEY'S FEE for preparing clarification questions pertaining to the patentable subject matter and analysing the Customer’s answers — coefficient 1 | 2500.00 |
| 10203 | ATTORNEY'S FEE for classifying the invention under the IPC (International Patent Classification) for patent search purposes — coefficient 1 | 750.00 |
Step 4. Patentability Search
Purpose:
-
Determination of novelty and inventive step (for a patent), or novelty only (for a utility model).
identification of the closest analogue to the claimed invention (prototype) to be referred to in the description.
We usually get started with the patentability search concurrently with Step 3 (once the volume of information received about the invention is sufficient for us to classify the invention under the current IPC version and conduct the patentability search). The patentability search is performed within 5 working days. The search results are analyzed and the opinion is drawn up within 5 working days after the search.
| Description | Вартість, грн. | |
| 10401 | ATTORNEY'S FEE for patentability search using online patent databases — coef. 1 (per each set of 15 IPC subgroups) | 5000.00 |
| 10402 | ATTORNEY'S FEE for patentability opinion based on the search results — coef. 1 (per each set of 20 documents) | 3500.00 |
Step 5. Drafting a Patent (Utility Model) Application
Drafting a patent (utility model application) takes 35 working days on avarage. The exact term is to be agreed when discussing and signing the Requirements Specification, and depends on complexity of the invention and sufficiency of information disclosed by the applicant.
| Description | Вартість, грн. | |
| 10601 | ATTORNEY'S FEE for drafting an independent claim — coef. 1 | 3000.00 |
| 10602 | ATTORNEY'S FEE for drafting a dependent claim — coef. 1 | 1250.00 |
| 10603 | ATTORNEY'S FEE for classifying the invention under the current IPC version — coef. 1 | 500.00 |
| 10604 | ATTORNEY'S FEE for drafting Section “Statement of the Technical Field” — coef. 1 | 750.00 |
| 10605 | ATTORNEY'S FEE for drafting Section “Background information and prior art” (per one analogue or problem faced by inventors) — coef. 1 | 2250.00 |
| 10606 | ATTORNEY'S FEE for drafting the statement of the technical problem or the technical result addressed by the invention — coef. 1 | 750.00 |
| 10607 | ATTORNEY'S FEE for drafting Section “Summary of the Invention” — coef. 1 (per one subject matter) | 3500.00 |
| 10608 | ATTORNEY'S FEE for drafting Section “List of Figures” and brief description of each drawing (per one figure) — coef. 1 (per each set of 10 references) | 750.00 |
| 10609 | ATTORNEY'S FEE for drafting the descrioption of the causal link between the features of the invention and the expected technical result or solution of the problem — coef. 1 (per one subject matter) | 2700.00 |
| 10610 | ATTORNEY'S FEE for drafting the descrioption of the product for Section “Detailed Description of the Embodiments” — coef. 1 (per one subject matter) | 2500.00 |
| 10611 | ATTORNEY'S FEE for drafting the descrioption of the process for Section "Detailed Description of the Embodiments" — coef. 1 (per one subject matter) | 2500.00 |
| 10612 | ATTORNEY'S FEE for drafting the Abstract — coef. 1 | 500.00 |
| 10613 | ATTORNEY'S FEE for preparing a drawing (figure) in electronic form — coef. 1 | 500.00 |
| 10614 | ATTORNEY'S FEE for additional processing of a drawing (figure) provided by the customer in electronic form — coef. 1 | 250.00 |
| 10615 | ATTORNEY'S FEE for compiling a patent (utility model) application on the basis of the prepared description, claims, abstract, and drawings — coef. 1 | 3500.00 |
Step 6. Filing the Patent (Utility Model) Application. Formal Examination
We file application materials within 2 days after they are approved by the customer.
A Utility Model application undergoes formal examination only (Step 7 is not applicable), while a Patent application undergoes both formal examination (this Step 6) and substantive examination (the next Step 7).
Non-accelerated formal examination takes up to 8 months for the utility model, and up to 17 months for the patent.
Where accelerated formal examination is ordered, it takes up to 20 working days.
| Description | Вартість, грн. | |
| 10701 | ATTORNEY'S FEE for filing the drafted patent (utility model) application to the Patent Office — coef. 1 | 2500 |
| 10721 | OFFICIAL FEE for filing a PATENT application (direct filing and PCT national entry), up to three claims [10100] - where the applicant (owner) is the inventor | 160* / 1600** / 480*** / 2400**** |
| 10722 | OFFICIAL FEE for filing a PATENT application (direct filing and PCT national entry), each additional claim over three [10100] — per 1 claim — where the applicant (owner) is the inventor | 16* / 160** / 48*** / 240**** |
| 10723 | OFFICIAL FEE for additional sheets over first 100 sheets — for a PATENT application [10100] — each set of 50 sheets — where the applicant (owner) is the inventor | 80* / 800** / 240*** / 1200**** |
| 10801 | ATTORNEY'S FEE for patent prosecution during formal examination of a patent (utility model) application (tracking deadlines, receiving documents, reporting an office action) — coef. 1 | 1750 |
* for an INVENTION application — if the applicant (owner) is the inventor
** for an INVENTION application — if the applicant (owner) is NOT the inventor
*** for a UTILITY MODEL application — if the applicant (owner) is the inventor
****for a UTILITY MODEL application — if the applicant (owner) is NOT the inventor
Step 7. Substantive Examination (for Patent Applications)
Time to completion:
This Step 7 is only applicable to Patent Applications (Utility Model Applications undergo formal examination only).
Non-accelerated substantive examination is takes up to 15 months.
Where accelerated substantive examination is ordered, it takes up to 80 working days.
| Description | Вартість, грн. | |
| 11001 | ATTORNEY'S FEE for filing a request for substantive examination — coef. 1 | 1250 |
| 11002 | ATTORNEY'S FEE for patent prosecution during substantive examination (tracking deadlines, receiving documents, reporting an office action) — coef. 1 | 3750 |
| 11003 | ATTORNEY'S FEE for filing a request for early publication of the patent application before 18 months from the filing date — coef. 1 | 1250 |
| 11021 | OFFICIAL FEE for substantive examination of the patent application, one independent item [11600] - where the applicant (owner) is the inventor | 600* / 6000** |
| 11022 | OFFICIAL FEE for each additional independent claim over one [11600] - 1 claim — where the applicant (owner) is the inventor | 600* / 6000** |
| 11023 | [] OFFICIAL FEE for requesting early publication of the patent application before 18 months from the filing date [11400] - where the applicant (owner) is the inventor | 20* / 200** |
* for an INVENTION application — if the applicant (owner) is the inventor
** for an INVENTION application — if the applicant (owner) is NOT the inventor
Step 8. Patent (Utility Model) Grant
Time to completion:
The publication fee is to be paid within 3 months following the positive Examiner's decision.
The patent (utility model) is granted within 2 months following the publication (registration).
| Description | Вартість, грн. | |
| 14001 | ATTORNEY’S FEE for paying the publication fee and grant fee, obtaining and forwarding the patent to the Customer - for residents of Ukraine | 1250 |
| 14002 | ATTORNEY’S FEE for paying the publication fee and grant fee, obtaining and forwarding the patent to the Customer - for non-residents of Ukraine | 2500 |
| 14021 | Basic publication fee (OFFICIAL FEE) [12400] - where the applicant (owner) is the inventor | 40* / 400** / 120*** / 600**** |
| 14022 | Extra publication fee for each page over 15 (OFFICIAL FEE) [12400] - 1 sheet — where the applicant (owner) is the inventor | 2* / 20** / 6*** / 30**** |
| 14023 | Patent grant fee (OFFICIAL FEE) — for residents of Ukraine | 17 |
| 14024 | Patent grant fee (OFFICIAL FEE) — for non-residents of Ukraine — the equivalent of USD 100 | 4000 |
* for an INVENTION application — if the applicant (owner) is the inventor
** for an INVENTION application — if the applicant (owner) is NOT the inventor
*** for a UTILITY MODEL application — if the applicant (owner) is the inventor
****for a UTILITY MODEL application — if the applicant (owner) is NOT the inventor
Patent and Utility Model Consultations
We provide consultations on matters related to the protection of patents and utility models in Ukraine and worldwide, as well as written materials explaining the stages and cost of patenting.
Free of charge:
-
The first 15 minutes of an oral consultation on patents and utility models;
Standard written materials on stages and costs of patenting.
In most cases, free consultations and basic written materials are enough to decide and start working with us.