About Patent and Trademark Attorneys of Ukraine

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Ukrainian legislation provides for an institute of specially certified specialists in the field of intellectual property, which are literally called: "Representative in intellectual property" or "Patent attorney". At the same time, persons who are not entered in the State Register of Intellectual Property Representatives (Patent Attorneys) are prohibited from calling themselves "Patent Attorneys". Patent attorneys of Ukraine can only be natural persons who can represent both foreign (natural or legal) persons and stateless persons, as well as Ukrainian natural and legal persons.

 

 

Next, we will consider who these patent attorneys are, where they came from, what functions they perform, and how they differ from other specialists in the field of intellectual property.

 

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Intellectual property representatives in the world

 

In various countries of the world, there has long been an order of relations between foreign persons (non-residents) and national intellectual property bodies of these countries, which provides for the mandatory implementation of these relations through specially authorized (licensed) representatives in intellectual property matters. In some countries, there is also an obligation to provide legal protection of the intellectual property rights of foreign persons (non-residents) through individual special representatives who are specialists in the field of intellectual property.

 

 

These representatives in intellectual property cases usually have a specific specialization or several specializations of activity: from submitting applications to the national intellectual property body for the acquisition of intellectual property rights for individual objects of intellectual property law and participation in examination procedures to the provision of legal services and representation in courts regarding dispute resolution and protection of intellectual property rights.

 

 

In order to acquire the status of such a representative in intellectual property matters, it is usually required to have appropriate education, appropriate previous work experience and successful passing of certification in the form of exams in certain subjects in accordance with their future specialization. The specified requirements for acquiring the status of such representatives depend on their future specialization.

 

 

Depending on the above specialization of activity, intellectual property representatives in different countries are called differently. They can be called "Patent Attorneys" (Patent Attorneys), "Patent Agents" (Patent Agents) or "Patent Lawyers" ( Patent Lawyers), "Registered Patent Attorneys" or "Registered Patent Agents", "Associated Patent Attorneys" ; (Chartered Patent Attorneys) or "Associated Patent Agents" (Chartered Patent Agents), "Benrishis" (Benrishi (Japan)), (Trade Mark Attorneys) or "Trade Mark Agents" (Trade Mark Agents, Trademark Agents). In some countries, the functions of these representatives in intellectual property cases can be performed by ordinary lawyers who have appropriate additional education or have passed special additional exams (Advocates, Attorneys-at-Law, Bengoshi (Japan)).

 

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Specialization of Intellectual Property Representatives in Ukraine

 

As it was already mentioned above, in accordance with the legislation of Ukraine, representatives specially certified by the state in intellectual property matters are called literally – "Representative in intellectual property affairs". Along with this name, the legislation provides for a shorter convenient name, which is equivalent and does not depend on the specialization of activity – "Patent attorney".

 

 

According to the current legislation of Ukraine, Patent attorneys can represent both foreign and stateless persons, as well as any Ukrainian individuals and legal entities.

 

 

At the same time, the Laws of Ukraine "On Protection of Rights to Inventions and Utility Models", "On Protection of Rights to Industrial Designs", "On Protection of Rights to Composition of Semiconductor Products", "On Protection of Rights to Marks for Goods" and services" the realization of the rights of foreign persons (natural or legal entities) and stateless persons in relations with the national intellectual property body is envisaged exclusively through state-registered special representatives.

 

 

The status of Patent Attorney of Ukraine is acquired as a result of state certification for specific specializations of activity. That is, a candidate for Patent Attorneys chooses and passes certification in certain specializations.

 

 

Such specializations are:

 

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  • "inventions and utility models";
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  • "industrial samples";
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  • "layout of semiconductor products" (layout (topography) of integrated circuits);
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  • "trademarks" (marks for goods and services);
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  • "geographical indications" (indication of origin of goods);
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  • "legal services in intellectual property matters".

 

In addition to the above-described "Representatives in intellectual property matters", which are simultaneously called "Patent attorneys", the legislation of Ukraine provides for "Representatives in intellectual property matters for plant varieties", which are not called Patent Attorneys, but also undergo state certification and receive a corresponding certificate.

 

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Requirements and state certification of Patent Attorneys of Ukraine

 

According to the current legislation, the Patent Attorney of Ukraine must meet the following requirements:

 

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  • availability of Ukrainian citizenship;
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  • permanent residence on the territory of Ukraine;
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  • availability of complete higher education;
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  • availability of a separate full higher education in the field of intellectual property;
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  • experience of practical work in the field of intellectual property protection for a period of at least five years;
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  • successful passing of qualifying exams in accordance with the declared specializations of activity, passing of attestation, entering information into the State Register of Representatives in Intellectual Property Affairs (Patent Attorneys) with the assignment of a registration number and obtaining a certificate of a Patent Attorney of Ukraine.

 

State certification of patent attorneys in Ukraine takes place once a year. Before attestation, candidates for patent attorneys pass special training courses on the activities of patent attorneys in accordance with the chosen specializations of future activity. Attestation of Patent Attorneys of Ukraine involves passing qualifying exams according to the specializations of activity declared by the candidate for Patent Attorneys. Qualification exams include passing tests, solving situational tasks and interviews.

 

 

Information about Patent Attorneys entered into the State Register of Intellectual Property Representatives (Patent Attorneys) is published in the official bulletin "Industrial Property".

 

 

According to the current legislation, persons who are not entered in the State Register of Intellectual Property Representatives (Patent Attorneys) cannot call themselves "Patent Attorneys".

 

 

Taking into account the above, it can be concluded that in order to obtain the certification of a Patent Attorney in all specializations and the ability to provide clients with a comprehensive range of services in the field of intellectual property, a Patent Attorney must have a full higher education in the field of natural sciences, a full higher legal education and a full higher education in the field of intellectual property.

 

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The main activity of Patent Attorneys

 

The main, but far from the only, area of activity of the Patent Attorney is the representation of any natural or legal persons in the National Intellectual Property Authority (NIPO) or in the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI) for the purpose of acquisition of intellectual property rights by the specified persons. That is, we are talking about the representation of applicants for applications for state registration or patenting of intellectual property objects.

 

 

As you know, the procedure for considering the specified applications for any object of intellectual property is a competitive process, where the task of the examination of the national intellectual property body is to identify inconsistencies with certain requirements of the current legislation. At the same time, the examination determines the grounds for a possible refusal to grant legal protection to the declared object. And the task of the Patent Attorney, as a representative of the applicant, is to defend and preserve the declared scope of protection of the object of intellectual property or to change this scope with maximum respect for the interests of the applicant. Usually, applicants, in order to avoid the above-mentioned problems in the process of examination of applications, to prevent the final loss of the possibility of patenting and to obtain the most relevant scope of legal protection of intellectual property objects, initially entrust the preparation of such applications to Patent Attorneys with the appropriate specialization.

 

 

The professionalism of the Patent Attorney in the process of filing such applications is that he can initially identify the most relevant intellectual property objects for registration or patenting and outline their future scope of legal protection in the most optimal way. At the same time, the Patent Attorney proceeds from the real intentions, needs and circumstances of the client and, accordingly, determines the optimal way of acquiring legal protection, defines the limits and forms the scope of the necessary legal protection. In particular, this applies not only to inventions, utility models, industrial designs, but also to trademarks and even works (objects of copyright). When making a decision regarding registration or patenting and filing an application for a specific object of intellectual property, the Patent Attorney takes into account the following circumstances:

 

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• possibility of achieving the maximum width of the scope of protection and probable risks of evasion by other persons from using this object;
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• reality, physical and financial availability of the possibility of proving the fact of illegal use of such an object;
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• compliance of this object with the conditions for providing legal protection;
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• probable risks of refusal of state registration or patenting of such an object;
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• probable risks of further contestation of registration or patenting;
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• degree of competitive advantages when using such an object;
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• possibility of obtaining similar protection in other countries of the world;
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• cost and possibility of optimization of expenses related to registration or patenting;
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• possibilities of contractual settlement of relations between persons related to the creation and further use of this object of intellectual property;
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• possibilities and types of commercialization of this object.

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Specifics of activity of Patent Attorneys of Ukraine

 

A patent attorney has the right to carry out his activities individually or together with other patent attorneys, may establish patent agencies, firms, bureaus or offices, etc., with the rights of a legal entity, and may also work as an employee within a legal entity.

 

 

A patent attorney acts within the mandate of the person he represents, in the mode of civil representation, which is carried out on the basis of the mandate agreement. For representation by the patent attorney of the principal in the National Intellectual Property Authority (NIPO) or in the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI) a written power of attorney with a specific list of powers of the Patent Attorney must be used. At the same time, notarization of powers of attorney provided by the persons represented by the Patent Attorney is not required.

 

 

In the process of representation at the National Intellectual Property Authority (NIPO) or at the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI), the Patent Attorney of Ukraine (in accordance with the powers specified in the power of attorney), in particular, may:

 

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• sign and submit statements and application materials regarding the acquisition of intellectual property rights or their corresponding state registration;
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• maintain correspondence related to record keeping for the specified applications;
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• make corrections to the materials of these applications and the corresponding information entered in the state registers;
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• cease paperwork on these applications;
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• submit any statements, petitions, objections and letters, including regarding the extension and termination of the validity period of security documents;
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• submit any statements, petitions, objections and letters related to the procedures for acquiring intellectual property rights and the exercise of these rights by other persons who are not clients of the Patent Attorney;
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• receive any documents, including security documents;
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• submit applications and petitions related to the assignment and termination of rights under the above-mentioned applications, with state registration of contracts regarding the disposal of intellectual property rights or with the protection of intellectual property rights;
• conclude contracts for services related to the procedures of state registration, acquisition and exercise of intellectual property rights, make payments under such contracts;
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• pay fees and state duties related to the protection of rights to intellectual property objects;
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• obtain appropriate certificates from banking institutions regarding the payment of state duties or fees related to the protection of intellectual property rights.

 

On behalf of the persons represented by the Patent Attorney, he can also monitor deadlines and pay periodic official fees for maintaining the validity of security documents (patents, certificates). Patent attorneys can carry out procedures for making changes to state registers of objects of intellectual property rights and procedures for state registration of agreements on the disposal of intellectual property rights. Patent attorneys can also monitor possible violations of intellectual property rights of the persons they represent.

 

 

In the course of their professional activity, patent attorneys can carry out research, patent information searches, and patent research. Among them, they can carry out research aimed at identifying objects of intellectual property rights, determining compliance with the conditions for providing legal protection, the possibility and expediency of acquiring rights to these objects, comparing such objects, establishing the facts of their use and violation of intellectual property rights property.

 

 

Patent attorneys can provide legal advice and services for drafting contracts on the use and disposal of intellectual property rights. This applies to agreements on the transfer (alienation) of exclusive intellectual property rights, licenses (permits) for the use of intellectual property objects, license agreements and commercial concession (franchising) agreements. Such services may also relate to issues of distribution of property rights of intellectual property between co-owners or future co-owners of property rights, regulation of relations between creators of intellectual property objects and their employers or customers of works that involve the creation of intellectual property objects.

 

 

According to the current legislation, in addition to representing the interests of any persons in the National Intellectual Property Authority (NIPO) or in the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI), a patent attorney can represent in judicial bodies, credit institutions and before any other natural and legal persons, before state authorities, in particular in law enforcement, customs and antimonopoly bodies.

 

 

Given that Patent Attorneys have a full higher education in the field of intellectual property, they can provide all the above services in relation to all other objects of intellectual property law, including works (objects of copyright), in relation to state registration of copyright and contracts relating to the copyright of a work.

 

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Obligations of Patent Attorneys

 

Current legislation obliges Patent Attorneys of Ukraine to keep secret the information obtained by them in the course of performing their professional duties, in particular, the essence of the issues for which the Patent Attorney was contacted, the content of the consultations and explanations provided by him, advice etc. Patent attorneys can determine the procedure for the circulation of information that is the subject of their professional, business or other interest, including whether this information is classified as confidential, and establish a protection system for such information.

 

 

A patent attorney is obliged to refuse to provide services or stop providing them if they can be used in a case in which he has already represented or consulted another person with opposing interests and the conflict has not been resolved. That is, the current legislation obliges the Patent Attorney to avoid conflict of interests. The legislation also stipulates that the Patent Attorney must have a personal seal indicating his name and registration number.

 

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Advantages of Patent Attorneys

 

As you can see, a Patent Attorney has significant advantages compared to ordinary uncertified patent experts or lawyers (attorneys) who specialize in the field of intellectual property:

 

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  • A patent attorney is guaranteed to have at least two complete higher educations, one of which is an education in the field of intellectual property;
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  • A patent attorney is guaranteed to have at least five years of practical experience in the field of intellectual property protection;
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  • Theoretical knowledge and practical experience of the Patent Attorney are confirmed by a special state certification;
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  • Only the Patent Attorney has the exclusive right to represent foreign and stateless persons in relations with the National Intellectual Property Office (NIPO) or with the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI) on the above issues;
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  • A patent attorney has the officially confirmed status of a specialist who can provide official conclusions based on the results of studies of objects of intellectual property rights and carry out patent studies with registration of their results in the form of conclusions and patent forms in the manner prescribed by the state standards of Ukraine.
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How to choose a Patent Attorney

 

When seeking help in matters related to intellectual property, in particular regarding patenting or registration of intellectual property objects (for example, inventions, utility models, industrial designs or trademarks), disposal of intellectual property rights, their protection, etc., attention should be paid not to the reputation of the enterprise where the Patent Attorney works, but to the Patent Attorney himself. When choosing and appointing a Patent Attorney of Ukraine, in order to understand his qualifications, powers and authority of the representation he performs, it is necessary to find out for which specializations of activity he received state certification. Also, depending on the type of services to be obtained, it is desirable to pay attention to the availability of a patent attorney with a complete higher education in the field of natural sciences and/or legal education.

 

 

Foreign persons and stateless persons in relations with the National Intellectual Property Office (NOIP) or with the "Ukrainian National Office of Intellectual Property and Innovation" (UKRNOIVI) regarding certain above-mentioned objects of intellectual property rights can exercise their rights exclusively through Patent Attorneys of Ukraine, who have state certification for the relevant specialization of activity. That is, for example, the interests of foreign persons in matters of patenting an invention cannot be represented by a Patent Attorney who does not have certification in the specialization "inventions and utility models".

 

 

As already mentioned above, in order to obtain the certification of a Patent Attorney in all the prescribed specializations and to ensure the possibility of providing clients with a comprehensive range of services in the field of intellectual property, in addition to a full higher education in the field of intellectual property, it is desirable for a Patent Attorney to simultaneously have a full higher education in in the field of natural sciences and a full higher legal education. That is why the head of the "Destra" Patent and Legal Agency, who is a Patent Attorney of Ukraine, certified in all the above specializations, has master's degrees in the field of electronics, law and intellectual property.

 

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Consultations on Intellectual Property

We provide consultations on matters related to the protection of Intellectual Property Rights in Ukraine and worldwide, as well as written materials explaining the stages and cost.

Free of charge:

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In most cases, free consultations and basic written materials are sufficient to decide and start working with us.

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