Información para el examen del párrafo 3 b) del artículo 27 (materia patentable) - Ver

Ukraine

Lista de preguntas

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According to the Law of Ukraine of 15 December 1993 No. 3687-XII “On Protection of Rights to Inventions and Utility Models” (with amendments) legal protection is granted to any inventions, whether products or processes, in all fields of technology.

Under Article 6.2 of this Law, the following may be a subject-matter of an invention:

  • a product (device, substance, micro-organism strain, plant or animal cells culture etc.); 
  • a process (method), as well as a new use of a known product or process.

An invention meets the conditions for patentability, if it is new, involves an inventive step and is capable of industrial application (Article 7 of this Law).

The legal protection shall be granted to an invention that does not contradict ordre public, humanity and morality and complies with the requirements of patentability (Article 6.1 of mentioned Law).

According to Article 6.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”, the legal protection under this Law shall not extend to such subject-matters of technology as plant varieties and animal breeds; processes of the reproduction of plants and animals that are biological in its basis and do not belong to non-biological and microbiological processes.

Thus, this Law provides for patent protection for such products as micro-organism strain, plant or animal cells culture etc., and for non-biological and microbiological processes for the production of plants and animals, if they meet conditions of patentability.

Plant varieties protection is available under the Law of Ukraine of 21 April 1993 № 3116-XII “On Protection of Plant Variety Rights” (with amendments).

As of today, there are no legislative acts on protection of animal breeds in Ukraine.

Article 6.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” states that the legal protection under this Law shall not extend to such subject-matters as plant varieties.

The Law of Ukraine “On Protection of Plant Variety Rights” provides for the definition of “plant variety”. It means a particular group of plants (clone, line, F1 hybrid, population) within the lower of the known botanical taxons (genus, type, species) irrespective of whether it satisfies the conditions of legal protection (Article 1).

An invention is patentable if it meets the conditions for patentability stipulated in Article 7 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”. 

Under the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”, the description of an invention shall be represented according to established procedure and shall disclose the subject-matter of an invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. Invention claims shall disclose the subject-matter of an invention, be based on the description and be clearly and concisely represented according to established procedure (paragraphs 7 and 8 of Article 12).

Under Article 28.2 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”, a patent confers on its owner the exclusive right to use an invention at his discretion if such a use does not infringe rights of other owners of patents.

The use of an invention encompasses:

  • manufacturing a product using a patented invention, usage of a product, offering for sale, including via the Internet, selling, importing and other means of its introduction into the commercial distribution, as well as storing a product for defined purposes;
  • use of the patented process or offering its use on the territory of Ukraine, if the person making such offer knows that the use of the process without the owner`s consent is prohibited or, given the circumstances, it is obvious.

According to Article 28.5 of the above-mentioned Law, the patent gives to its owner the exclusive right to prevent other persons from using the invention without the authorization, excluding the cases when according to this Law such use is not considered to be the infringement of rights granted by a patent.

The patent owner may transfer, by the contract, the property right to an invention to any person, which becomes his legal successor (Article 28.6 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”).

Article 28.7 stipulates that the patent owner has the right to grant the permission (a license) for the use of an invention to any person based on a license contract.

According to Article 31.2 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” the use of the patented invention shall not be considered to be the infringement of rights, deriving from a patent, provided that it is used:

  • without any commercial purpose; 
  • for scientific or experimental purposes; 
  • in situations of emergency (natural disaster, accident, epidemic etc.) with the notification of the patent owner as soon as possible and with the paying a relevant compensation to him.

The exceptions to the patent owner's right, such as acts done for non-commercial, scientific or experimental purposes are similar with the exceptions, available in respect of plant variety rights, set out by Article 47 of the Law of Ukraine “On Protection of Plant Variety Rights”.

With the objective of public health protection, state defense, ecological safety and other public interests, the Cabinet of Ministers of Ukraine may grant permission to use the patented invention by a defined person without the consent of the patent owner (in accordance with conditions, stipulated in Article 30.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”).

In addition, Article 43 of the Law of Ukraine “On Protection of Plant Variety Rights” regulates the issuance of the compulsory licensing for the use of the plant variety without the consent of the patent holder.

N.B.: Sírvanse cerciorarse de que las respuestas a las preguntas precedentes abarquen cada una de las categorías especificadas en el apartado b) del párrafo 3 del artículo 27, es decir, los microorganismos, los procedimientos esencialmente biológicos para la producción de plantas o animales, los procedimientos microbiológicos, los procedimientos no biológicos, las obtenciones vegetales y las demás invenciones relativas a plantas o animales.

The Law of Ukraine of April 21, 1993 No. 3116-XII “On Protection of Plant Variety Rights” (with amendments) provides for the protection of intellectual property rights to plant varieties.

Ukraine has acceded to the International Convention for the Protection of New Varieties of Plants of December 2, 1961, as revised by the Additional Act of 1972, the 1978 Act and the 1991 Act (according to the laws of Ukraine of June 2, 1995 No. 209/95-ВР and of August 2, 2006 No. 60-V).

Plant varieties protection is available under the Law of Ukraine of April 21, 1993 No. 3116-XII “On Protection of Plant Variety Rights” (with amendments).

Article 6.3 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models” of December 15, 1993 (with amendments) stipulates that the legal protection under this Law shall not extend to such objects as plant varieties.

The legislation of Ukraine on the protection of plant varieties is based on the Constitution of Ukraine and consists of the Law of Ukraine “On Protection of Plant Variety Rights” (hereinafter – the Law), the Civil Code of Ukraine, international treaties and agreements on protection of plant variety rights consented by the Verkhovna Rada of Ukraine as binding. The Procedure for Maintaining the Register of Patents on Plant Varieties is approved by the Resolution of the Cabinet of Ministers of Ukraine of September 19, 2018 No. 755. 

The Law was notified to the TRIPS Council (the WTO document IP/N/1/UKR/P/2).

In addition, pursuant to Article 63.2 of the TRIPS Agreement Ukraine has notified the laws and regulations pertaining to the subject-matter of this Agreement, including plant varieties, in the WTO document IP/N/1/UKR/1.

According to Article 1 of the Law, the definition of “plant variety” means a particular group of plants (clone, line, F1 hybrid, population) within the lower of the known botanical taxons (genus, type, species) irrespective of whether it satisfies the conditions of legal protection.

Article 11 of the Law stipulates criteria of variety suitability for the acquisition of intellectual property rights to such variety.

 

Under Article 11.2 of the Law, a variety shall be deemed suitable for the acquisition of a right to it as an intellectual property subject, if, following its characteristics originating from a particular genotype or a particular combination of genotypes, it is new, distinct, uniform and stable.

According to Article 11.6 of the Law, a variety complies with condition of distinctiveness, if, following its characteristics, it is clearly distinguished from any other variety, generally known prior to the date, on which the application is deemed to be filed.

A variety, which is opposed to the applied one, shall be deemed generally known if:

а) it is widespread on a particular territory within any country;

b) information about its characteristics has become known globally, in particular through its descriptions in any publicly disclosed publications;

c) it is presented as a sample in public collection;

d) it is under legal protection and/or included in official plant variety register of any country, being herewith deemed generally known from the date of application for granting the right or entering to the register.

Article 191 of the Law states that any person may apply for the acquisition of intellectual property right to dissemination of the variety, referred to as generally known, without acquisition of the intellectual property rights to such variety confirmed by a patent.

A plant variety can be protected if it is new, distinct, uniform and stable, following its characteristics originating from a particular genotype or a particular combination of genotypes (Article 11.2 of the Law).

The author(s) of a plant variety or other persons, that have acquired intellectual property rights to a plant variety according to the contract or under the Law, are entitled to intellectual property rights to a plant variety (Article 31 of the Law).

Section III of the Law establishes the procedure for the acquisition of intellectual property rights to plant varieties. It includes such stages as filing an application to the Competent Authority, examination of the application and state registration of rights. The Competent Authority is the Ministry of Agrarian Policy and Food of Ukraine, responsible for developing and implementing the national policy on plant variety rights protection. The Ministry may authorize companies, institutions and organizations to exercise some specific powers, related to plant variety rights protection, if they meet the requirements, stipulated in Article 9.1 of the Law.

According to Article 10 of the Law, the following variety rights may be acquired:

  • personal non-property rights of intellectual property to a plant variety (it shall be confirmed by a certificate of plant variety authorship); 
  • intellectual property rights to a plant variety (it shall be confirmed by a plant variety patent; the scope of legal protection to variety, for which a patent is granted, is determined by the total characteristics, included in the variety description in the Register of Patents); 
  • intellectual property rights to plant variety dissemination (it shall be confirmed by a certificate of state registration of a plant variety). 

The above rights to variety shall be acquired according to the procedure established by this Law.

According to Article 47 of the Law, intellectual property rights to plant variety shall not extend to:

  • acts done privately and for non-commercial purposes; 
  • acts performed for experimental purposes; 
  • acts performed to develop new varieties of plants.

Article 43 of the Law establishes the possibility of granting compulsory licensing for the use of the variety without the consent of the patent holder. Such compulsory license may be only non-exclusive, with specification of variety use scope, term of permission validity, amount and procedure for remuneration to the patent holder. It may be granted by the Cabinet of Ministers of Ukraine and by the court.

The duration of protection shall be 35 years, counted from the 1st January of the year following the year of state registration of intellectual property rights to a plant variety for trees and shrubs and grape; 30 years – for other varieties (Article 41.2 of the Law).

According to Article 40 of the Law, a patent holder may transfer its property rights to a variety to any natural or legal person, which becomes its legal successor, under the licensing contract. In addition, transfer of rights may be performed through inheritance. 

Any actions in respect of the protected variety, performed without the authorization of the owner of intellectual property rights to such plant variety, shall be deemed to constitute an infringement of intellectual property rights to a plant variety (Article 53.2 of the Law). Ukrainian laws establish the responsibility for infringement of plant variety rights.

According to Article 53.4 of the Law, the person whose variety rights have been violated may claim the following:

  • ceasing the actions that violate or predetermine the infringement of its rights as compared to the situation that existed before such infringement;
  • indemnification for the caused damage, including the lost profit;
  • compensation for non-pecuniary damage;
  • taking other measures on variety rights protection provided for by laws of Ukraine.

The person, entitled to use the variety under the license contract, may also claim the restoration of the violated patent holder`s rights, unless otherwise is provided for by the contract.

Under Article 53.5 of the Law, at the request of the right holder, the infringer shall cease the infringement of the rights and indemnify for the caused damage.

Article 54 of the Law provides for provisions concerning settlement of disputes on variety rights in the course of court proceedings. It stipulates that person, whose variety rights have been violated, may apply to the court for remedy.

The responsibility related to the infringement of variety rights is set out in Article 55 of the Law. The court is entitled to render a judgment on the following:

  • compensation for non-pecuniary (non-property) damage, caused by the infringement of the variety rights, with specification of the amount of compensation;
  • compensation for the damage, caused by the infringement of intellectual property rights to a plant variety; 
  • recovery of profit, received in the result of variety rights infringement, including the lost patent holder`s profit;
  • recovering the compensation, defined by the court in amount from 10 to 50,000 minimum salaries, with due consideration of whether the infringement was intended or not, instead of compensation for the damage or recovery of profit;
  • ceasing the act that predetermines the infringement of variety rights.

The court may render a judgment to impose a fine on the infringer amounted to 10% of the charge, judged in favor of the claiming party (Article 55.2 of the Law). Furthermore, the court may render a judgment on the following:

  • withholding from commercial distribution or seizing any variety materials and product, obtained with using such variety, which have been illegally received by the infringer (the variety materials and product, acquired by other persons in good faith, shall not be subject of seizure); 
  • withholding or seizing the materials and/or equipment, which have been extensively used for the illegal production of variety materials (Article 55.3 of the Law).
B. Sistemas de protección de las obtenciones vegetales