Patent researches (searches/monitorings) are conducted to assess compliance of an invention/utility model or design with the terms of legal protection, detection and investigation of registered and filed for registration the similar objects. Such searches help to verify the chosen object before entering the market and make sure that it is unique, that is created or prepared by the author for the specifying goal. Conducting a search will help to avoid the legal risks due to a thorough check of the created object.
The patent research process consists of the following steps:
- determine the conditions of the research (subject, terms, purpose, countries, etc.;
- conducting the research;
- systematization and analysis of found information;
- preparation and presentation of a report to the client on the results obtained.
The subject of patent researches can be:
- products - devices, mechanisms, systems of interacting units, structures, products, substances, strains of microorganisms, plant cell culture and animal and other biological materials, including transgenic plants and animals;
- processes (methods) - the manufacture, processing, product processing and control its quality, the transformation of matter, energy, information, measurement parameters, diagnosis, treatment, process control, which is the subject of technology;
- a new use of a known product or process;
- shape, picture or coloration, or their combination.
«Pavlovych and Co.» agency specializes in conducting the patent researches both in Ukraine and abroad including researches on the Internet. Moreover, in the company’s arsenal there are dozens of professional expert opinions on the patentability of the search object.
Registration of the inventions/utility models in Ukraine consists of the following steps:
1. filling an application – is an important stage of registration, since the correct completion of all documents determines the further prosecution of the registration procedure. At this stage an application is formed and includes a description of the invention/utility model, claims, drawings, if they are referenced in the description; abstract and an actual application. The description of the invention/utility model should fully and clearly describe the essence of the achievement so that a person skilled in the art can analyze it. The claims of the inventions/utility models based on the description. The formula briefly and clearly expresses the essence of the invention/utility model and defines the scope of legal protection to be granted by the patent. The abstract is prepared for informational purposes only.
2. after filing the application goes to the stage of formal examination, where the examiner will check the correctness of filed documents, the presence of all necessary payments and power of attorney.
3. after formal examination the applications for inventions go to the stage of qualified examination (examination on essence) which can be performed only after receiving by the examination department the applicant’s request with the payment of the official fee for such action. The qualified examination determines whether the claimed invention fits the conditions for patentability (novelty, inventive step and industrial applicability).
4. on the basis of the results of the qualified examination, the applicant is informed of the conformity of the invention with the conditions for granting legal protection and issues a decision of registration or refusal in issuance a patent and requirements for provision of additional materials, without which the examination is impossible.
5. after receiving the decision of registration and payment of all necessary fees for issuing a patent and publication of a patent, the applicant receives a patent for invention/utility model and the information that the patent is granted and published in the official journal.
6. the next important step is timely maintenance of the validity of patents, namely annual maintaining the validity of patent for an invention (20 years from the filing date), patent for utility model (10 years from the filing date).
The object of the invention (utility model) may be: product (device, substance, microorganism strain, culture of plants and animals, etc.); process (method) and a new application of the already known product or process. It is necessary to remember that the following objects cannot be registered as inventions: ideas relating to the appearance of products, including those aimed at satisfying aesthetic and ergonomic needs (such objects are protected as industrial designs); databases (such objects are protected as copyright); methods of playing games; methods of performing mental operations; ideas that cannot be implemented and also those that contradict the norms of humanity and morals.
The right to obtain a patent has an inventor and other persons who have acquired the right to an invention (utility model) under a contract or by law.
It is not always possible to determine simple and unambiguously whether your object is subject to protection as inventions or utility models, therefore, in case of any doubt, please contact our company's specialists.
Registration of industrial designs in Ukraine consists of the following steps::
1 filling of an application – is an important stage of registration, since the correct completion of all documents determines the further prosecution of the registration procedure. At this stage an application is formed and includes a description of the design with the indication of its essential features, an image of the design or variants thereof, and an actual application.
2 after filing the application goes to the stage of formal examination, where the examiner checks the correctness of filed documents, the presence of all necessary payments and power of attorney.
3. on the basis of the results of the formal examination, the applicant receives a decision on registration or notification for providing the additional materials, without which further prosecution of the application is impossible.
4. after receiving the decision and payment of all necessary fees for issuing a patent and publication of a patent the applicant receives a patent for design and the information that the patent is granted and published in the official journal.
5. the next important step is timely maintenance of the validity of patents, namely annual maintaining the validity of patent for design (15 years from the filing date).
You can register as an industrial design any product that has a new appearance.
An object of the design may be a shape, pattern or color, or combination thereof. It should also be borne in mind that the industrial design does not protect text forms. The legal protection is not granted to objects of architecture (except for small architectural forms); industrial, hydrotechnical and other stationary structures; printed matter as such; objects of an unstable form of liquid, gaseous, free-flowing, or similar substances, etc.
The scope of legal protection is determined by the combination of essential features of industrial design presented on image (images) of the product.
The right to obtain a patent has an author and other persons who have acquired the right to an design by contract or by law. The patent grants its owner the exclusive right to use a design at its own discretion, if such use does not violate the rights of other patent owners, as well as to prohibit other persons from using an industrial design without their permission, unless such use is recognized in accordance with the legislation as a violation of the rights of the patent’s owner.
Typically, it is difficult for applicants to independently determine the object of intellectual property and understand the nuances associated with its protection. Often, they wish to protect an industrial design with all features of an utility model, or file an application for an invention while their object is an industrial design. Therefore, we are always ready to listen all your questions, advise you and determine exactly what actions should be taken in your situation.
Patents for inventions/utility models have the territorial character, that means that the rights for inventions/utility models are valid only in the country where the application for registration is filed and the patent was granted. At the present time it is not possible to obtain the universal, “world” or “International” patent. However, the protection of intellectual property rights abroad can be done both by filing the national applications with the patent office of each chosen country, and by simplified procedures involving the filing of the regional applications with the regional patent offices.
Thus, an applicant can obtain a patent for an invention/utility model as follows:
- by obtaining a national patent in one or more chosen countries by filing an application for registration of an invention with the patent office of each country. To submit a direct national application in the chosen country or countries, you must first file an application in Ukraine. Such procedure is appropriate for an applicant whose purpose is patent protection in one or more countries.;
- by obtaining an Eurasian patent by filing one application with the regional patent office - the Eurasian Patent Organization (EAPO). The Eurasian patent provides legal protection for inventions in the territories of the countries participating in the Eurasian Patent Convention (EAPC) - Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. Since the Eurasian patent provides legal protection for inventions simultaneously in the territory of 8 CIS countries, it is most appropriate to obtain it if patenting is necessary in the territory of two or more states. Otherwise, it would be advisable for the applicant to consider national patenting in a particular country;
- by obtaining a European patent by filing one application with the Regional European Patent Office (EPO). The procedure for obtaining a European patent is regulated by the European Patent Convention, which is currently ratified by 38 European countries (http://www.epo.org/about-us/foundation/member-states.html). An issued European patent has the force of a national patent in the territory of each country indicated therein. However, it should be noted that the European patent is automatically valid only in Germany, France, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom. For the validity of a European patent in other countries, the European Patent Convention provides the validation (confirmation) procedure;
- under PCT procedure (Patent Cooperation Treaty). If you plan to obtain a legal protection in a number of countries, the best option would be to file an international application using the procedure of Patent Cooperation Treaty. This procedure allows applicants to patent their inventions in many countries around the world by filing only one international application with the patent office of Ukraine, and then with the World Intellectual Property Organization, or immediately to the World Intellectual Property Organization. It should be noted that the result of an international PCT application filing is not a patent. The direct granting of patents is carried out by the national and/or regional offices of the chosen countries. Therefore, in order to obtain a legal protection for invention in chosen countries, the documents for PCT application are submitted to the national and/or regional departments of those countries, after which the chosen office carries out an examination and decides or refuse in granting the patent. To the date, there are 152 participating countries (http://www.wipo.int/pct/en/pct_contracting_states.html);
- in the nearest future an application for a European Union Patent will become available. A European Union Patent will provide a legal protection to inventors in 28 EU countries using a one-step process. The only difference from the European patent will be the absence of a validation (confirmation) procedure after the grant of the patent.
If you wish to obtain a utility model patent, you should remember that not all countries can obtain a utility model patent. This link provides a list of countries where the institute of utility model is presence (https://www.wipo.int/sme/en/ip_business/utility_models/where.htm).
Patents for designs have the territorial character, that means that the rights for inventions/utility models are valid only in the country where the application for registration is filed and the patent was granted. The protection of intellectual property rights abroad can be protected both by filing the national applications with the patent office of each chosen country and by simplified procedures involving the filing the regional applications with the regional patent offices.
Thus, an applicant can obtain a patent for design as follows:
- by obtaining a national patent in one or more chosen countries by filing an application for registration of the design with the patent office of specific country. To submit a direct national application in the chosen country or countries, you must first file an application in Ukraine. Such procedure is appropriate for an applicant whose purpose is patent protection in one or more countries;
- by international registration under the Hague system. This system provides protection for designs in 113 countries (https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=9) by filing one application with the WIPO International Bureau.;
- by obtaining a certificate for Registered Community Design (RCD). The application for design registration shall be filed with the European Union Intellectual Property Office (EUIPO). By filing one application the applicant receives a legal protection in the territory of all 28 Member States of the European Union. In case a new State joins the European Union, the legal protection of the registered design automatically extends to the territory of that State.
There are also other regional patent offices, such as the African Regional Industrial Property Organization (ARIPO), which accepts regional design applications and issues regional patents that have the same validity as patents issued by a country in that region (members of this organization are 19 countries - Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, Sao Tome and Principe, Somalia, Sudan, Eswatini, Tanzania, Uganda, Zambia, Zimbabwe) as well as the African Intellectual Property Organization (OAPI).
When creating an intellectual property object, the applicants decide to protect their object not only in the country where the object is created, but also in foreign countries. For a clearer plan of protection it is necessary to turn to the international law and choose the most profitable procedure, with which the specialists of our company will help you.
The disposal of intellectual property rights for inventions/utility models and designs based on such contracts as assignment agreement, licensing agreements and franchising agreements.
Under the assignment agreement the one party to whom the rights for invention/utility model or design belong, transfers partly or fully these rights to another party. To transfer the rights for invention/utility model or design is possible during its registration and after receiving the protective document. One of the main features of the assignment agreement is that this agreement is subject to obligatory state registration.
Under the licensing agreement the one party (the licensor) provides the other party (the licensee) permission to use the invention/utility model or design (license) under conditions determined by mutual agreement of the parties with the requirements of legislation. One of the differences between a licensing agreement and assignment agreement is that the owner of the invention/utility model or design, in respect of which the contract remains, is unchangeable. The licensing agreements are not subject to obligatory state registration. However, in our opinion, the registration is necessary as gives the guarantee to the parties both before each other and before third parties. The licensing agreement is concluded with respect to the registered intellectual property object. It should be noted that the right to use the invention/utility model or design and ways of its use that are not stipulated by the licensing agreement will be recognized as not provided to the licensee.
An important feature of the franchising relationship is the transfer of business experience and the intellectual property objects, both registered and non-registered. The franchising agreement in our legislation in other words is also called “contract of commercial concession”. Under this agreement one party (the owner) is obligated to provide the other party (user) for payment and in accordance with its requirements the right to use the set of rights that are belong to the owner in order to produce and (or) sale of certain types of goods and (or) services. This agreement is comprehensive character and includes the elements specific agreements that differ in objectives, subject and a legal construction. The subject of a franchising agreement is the right to use the intellectual property objects, commercial experience and business reputation. It is necessary to remember the important feature of this agreement - it is subject of state registration by the state authority which performed the state registration of the owner. If the owner is registered in a foreign country, the registration of the agreement should be performed by the state authority which performed the state registration of the user. Termination of this agreement is also subject to state registration.
The main purpose of obtaining a patent is to obtain a commercial benefit - a patent can and must bring profit. Such a powerful way to protect rights, as obtaining a patent for an invention/utility model or design, helps to avoid the competition in the market, giving the owner a unique advantage over competitors - a monopoly right to use his object at his own discretion, the right to authorize the use of the invention/utility model or design on the basis of a license or franchising agreements, the exclusive right to prevent the unauthorized use of the invention/utility model, design by third parties, including the prohibition of such use. These rights are the basis for the commercial success of the patent owner. The patent for an invention can be sold, as well as partially transfer the right to use it the profit. The specialists of our company have extensive experience in drafting agreements and will help you to compose the text of an agreement and will be happy to represent your interests before the registering authorities.