On 23 August 2016, the Ukrainian Government (the
"Government") green lighted the winding
up procedure of the State Intellectual Property Service of Ukraine
(the "Service"), and transformation of
State Enterprise "State Intellectual Property Institute of
Ukraine" (the "UAPTO") into
governmental organization – duumvirate of regulatory bodies,
which were regulating the intellectual property system in Ukraine
The Ministry of Economic Development and
Trade of Ukraine (the "Ministry")
– a successor of the Service – will also acquire two
affiliates of the Service: State Organisation "Ukrainian
Agency for Copyright and Related Rights" (responsible for
collective management of copyright and related rights) and State
Enterprise "INTELZAKHYST" (responsible for maintaining of
the register of control marks for marking of certain copyrighted
works and, since recently, assistance in combating Internet
On the wrecks of the existing institutional
IP Empire, the Government expects to establish a two-tier system -
the National Agency for Intellectual Property (the
"National IP Agency") that will be
subordinated to the Ministry. While the full impact of the
institutional reform on the intellectual property system is yet
unclear and will be assessed mainly by the progress and quality of
laws and regulations adopted, IP rights holders should keep the
eyes open to avoid any negative legal consequences during or after
the transitional period.
The length of transitional period
The road map approved by the Government does
not contain an exact date by which the National IP Agency should be
finally established. Presumably, searching for the best world
practices should be completed in September 2016, and the draft law
on improvement of state regulatory measures with respect to
intellectual property system should be submitted to the Government
in October 2016. Once the Ukrainian Parliament adopts the
respective law, the Government will have two months to establish
the National IP Agency. In the best-case scenario, the
establishment of the National IP Agency will be completed early in
2017. In the worst-case scenario, the transitional period may take
the entire year of 2017, or even longer.
In order to avoid a regulatory vacuum, the
Service will continue to regulate intellectual property system
until its power is assigned to the Ministry.
It is not clear whether the UAPTO will
continue to exist up to the creation of the National IP Agency. So
far, it is assumed that it will continue to carry out its functions
during the transitional period, including accepting and examining
the applications with respect to trademarks, inventions, utility
models and designs.
Lifehacks for IP rights holders: how respond to the
IP rights holders should consider taking the
following steps during the transitional period:
the IP counsel to determine the status of the institutional
prior to(i) filing new
applications with respect to trademarks, inventions, utility models
and designs with the UAPTO; (ii) filing IP assignment
agreements with the Service; and (iii) initiating IP
litigation (NB: the Service is usually engaged in the IP court
proceedings as a co-defendant).
expedited examination of application that have been already filed
to avoid a potential negative impact of the institutional reform on
the registration, when the reform is at its peak.
timely consideration of the complaint(s) filed with the
Service's Board of Appeal prior to liquidation of the
monitor the status of application that have been already filed with
respect to trademarks, inventions, utility models and designs to
avoid a potential loss of files and double check bank details
before making any further official payments within the existing
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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