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 Agreement

Any 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.

Having signed the confidentiality agreement, DPL proceeds to the following steps.

Step 2. Invention Disclosure Form

We usually provide the customer with an invention disclosure form (questionnaire) to assist the applicant (inventor) in collecting their thoughts regarding the matter.

At this step, the customer provides us with the following information:

  • Applicant Details — the information about the person(s) to be designated as the applicant(s) who will eventually be the patent owner(s) after the registration process is completed.
  • Inventor Details — the information about the person(s) who will be designated as the inventor(s) in the patent application.
  • Invention Details — the information disclosing how the invention works, what problem it seeks to solve, and why is it better than other products/processes.

Options for designating the Applicant (future patent owner):

  • An individual or a legal entity.
  • 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 Applicant — 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.

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.

The 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 infringed 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.

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.

DescriptionFees, EURTime to Completion
ATTORNEY'S FEE for analyzing the initial information provided by the Customer to identify patentable subject matter and draw up the requirements specification for the patent application1805 working days
Where the information received from the Customer is insufficient or inconsistent – ATTORNEY'S FEE for preparing clarification questions pertaining to the patentable subject matter and analyzing the Customer’s answers100Drafting questions – within 2 working days; Analyzing the answers – within 5 working days
ATTORNEY'S FEE for classifying the invention under the IPC (International Patent Classification) for patent search purposes30upwithin 2 working days after receiving data sufficient to conduct a patent search
Signing the Contract and Patent Application Requirements Specification, drafting other documentswithin 1 working day after approval of the Patent Application Requirements Specification
Subtotal (where no clarification questions are needed):210

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.

Time to completion:

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.

DescriptionFees, EURTime to Completion
ATTORNEY'S FEE for patentability search (per each set of 15 IPC subgroups)270within 5 working days
ATTORNEY'S FEE for patentability opinion based on the search results (per each set of 20 documents)180 within 5 working days following the search
Subtotal:45010 working days

Step 5. Drafting a Patent (Utility Model) Application

Time to completion:

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.

DescriptionMinimal Fees, EURAverage Fees, EUR
[120101] ATTORNEY'S FEE for drafting an independent claim180240
[120102] ATTORNEY'S FEE for drafting a dependent claim-100
[120103] ATTORNEY'S FEE for classifying the invention under the current IPC version-40
[120104] ATTORNEY'S FEE for drafting Section “Statement of the Technical Field”4560
[120105] ATTORNEY'S FEE for drafting Section “Background information and prior art” (per one analogue or problem faced by inventors)135180
[120106] ATTORNEY'S FEE for drafting the statement of the technical problem or the technical result addressed by the invention4560
[120107] ATTORNEY'S FEE for drafting Section “Summary of the Invention” (per 1 subject matter)210280
[120108] ATTORNEY'S FEE for drafting Section “List of Figures” and brief description of each drawing (per one figure) (per each set of 10 references)-60
[120109] 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 (per one subject matter)-216
[120110] ATTORNEY'S FEE for drafting the descrioption of the product for Section “Detailed Description of the Embodiments” (per one subject matter)-200
[120111] ATTORNEY'S FEE for drafting the descrioption of the process for Section "Detailed Description of the Embodiments" (per one subject matter)150200
[120112] ATTORNEY'S FEE for drafting the Abstract3040
Subtotal:795
(min.)
1676
(average)

Step 6. Filing the Patent (Utility Model) Application. Formal Examination

Time to completion:

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.

DescriptionFees, EUR
ATTORNEY'S FEE for filing the patent (utility model) application to the Ukrainian Patent Office350
OFFICIAL FEE for filing a PATENT application (direct filing and PCT national entry), up to three claims, up to 100 sheets
- where the applicant is the inventor
- where the applicant is NOT the inventor


7
74
OFFICIAL FEE for filing a UTILITY MODEL application, up to three claims (direct filing and PCT national entry), up to three claims, up to 100 sheets:
- where the applicant is the inventor
- where the applicant is NOT the inventor


20
96
ATTORNEY'S FEE for patent prosecution during formal examination (tracking deadlines, receiving documents, reporting an office action)100
Subtotal for the Patent:
- where the applicant is the inventor
- where the applicant is NOT the inventor

Subtotal for the Utility Model:
- where the applicant is the inventor
- where the applicant is NOT the inventor

457
524


470
546

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.

DescriptionFees, EUR
ATTORNEY'S FEE for patent prosecution during substantive examination (filing a request for substantive examination, tracking deadlines, receiving documents, reporting an office action)250
OFFICIAL FEE for substantive examination of the patent application, one independent item (for Patent Applications only):
- where the applicant is the inventor
- where the applicant is NOT the inventor


24
240
Subtotal:
- where the applicant is the inventor
- where the applicant is NOT the inventor

274
490

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).

DescriptionFees, EUR
ATTORNEY’S FEE for paying the publication fee and grant fee, obtaining and forwarding the patent to the Customer100
Basic publication fee (Patent)
- where the applicant is the inventor
- where the applicant is NOT the inventor


2 (plus 0.08 for each page over 15)
16 ( plus 0.8 for each page over 15)
Basic publication fee (Utility Model)
- where the applicant is the inventor
- where the applicant is NOT the inventor


5 (plus 0.24 for each page over 15)
24 (plus 1.2 for each page over 15)
Patent (utility model) official grant fee (for non-residents)91
Subtotal for the Patent:
- where the applicant is the inventor
- where the applicant is NOT the inventor

Subtotal for the Utility Model:
- where the applicant is the inventor
- where the applicant is NOT the inventor

202up
216up


205up
224up

Examples of Registered Patents and Utility Models

Internal combustion engine
Method of delivering a free-fall container to a given point
Combined screw conveyor
Screw conveyor loading unit

More examples of registered patents and utility models >>>