Filing an international PCT application in Ukraine (for applicants non-residents of Ukraine)
For transition from the international PCT application to the national phase in Ukraine, the following actions should be taken no later than the 31st month from the PCT application priority date:
- assign a Ukrainian patent agent as Applicant's representative before the Patent Office of Ukraine;
- submit the following documents to the Patent Office of Ukraine:
-
a statement on filing an invention (or utility model) application with ireference to international PCT priority, this being an indication of transition to the national phase;
-
a translation of the international PCT application into the Ukrainian language;
-
if the Applicant has made amendments to the materials of the international PCT application after it has been filed, an additional translation of amended materials into Ukrainian is required.
- pay an application filing fee.
After these materials have been filed with the Patent Office of Ukraine, an examination for formalities is performed. If an appropriate request has been filed, a qualifying examination (as to substance) of the application is performed. These examinations are performed in full compliance with rules for examining applications of Ukraine filed by national applicants.
The international РСТ application can be filed in Ukraine as a national application for both an invention and utility model for being issued an invention or utility model patent of Ukraine.
The term of an invention patent of Ukraine is 20 years from the date of filing an international application. The term of a utility patent of Ukraine is 10 years from the date of filing an international application.
The average term of processing an international application by the Patent Office of Ukraine is 18 months from the date of filing an application with the Patent Office. Ukraine also provides for a procedure of accelerated transition of a РСТ application to the national phase provided that an extra patent fee has been paid.
For transition of an international РСТ application to the national phase in Ukraine, the Applicant should submit to us the following:
- the No. of the international РСТ application;
- the text of the international РСТ application in English, German or French if the PCT application was published in another language;
- amendments (if any) to the specification and international application claims in English, German or French, which the Applicant asks to be accounted for during application processing in Ukraine;
- information about the Applicant if it (for filing an application in Ukraine) differs from that in the International РСТ application;
- information about the form of protection (invention or utility model) that the Applicant has chosen, which should be accorded during transition of the international application to the national phase in Ukraine.
Based on the information received, we will prepare the following:
- a cost estimate for being granted a patent of Ukraine. It will include the following expenditures: the cost of translating the international РСТ application into the Ukrainian language, governmental fees and patent agent fees;
- a power of attorney to represent the applicant's interests before the Patent Office of Ukraine.
Invention application processing by the Patent Office of Ukraine includes the following stages:
- filing an invention application with the Patent Office of Ukraine;
- performing an examination for formalities of the invention application;
- publishing the application in the Bulletin of Inventions of Ukraine;
- filing a request for a qualifying examination (as to substance) during three years from the date of filing the international application;
- performing a qualifying examination of the invention application. By the results of the qualifying examination of the application, the Patent Office of Ukraine makes a decision on granting a patent or on a preliminary rejection;
- if a patent has been granted, it is published as an invention patent of Ukraine;
- after the invention patent has been granted, the phase of its maintaining during the entire term envisaged by the law of Ukraine commences.
Ukrainian law provides for transforming an invention application to a utility model one. Such transformation can be done either prior to receiving a final decision on rejection of an invention patent or prior to receiving a decision on registration of an invention patent of Ukraine.
Processing a utility model application by the Patent Office of Ukraine comprises the following stages:
- filing a utility model application with the Patent Office;
- performing an examination for formalities of the utility model application;
- if a patent is granted, the utility model patent of Ukraine is published;
- after a utility model patent has been granted, the stage of its maintaining during the entire term of 10 years envisaged by the law of Ukraine commences.
IMPORTANT! Ukraine provides for a benefit on the amount of patent fees for inventors (physical persons) who are designated as authors and applicants in the invention or utility model application.
The cost of filing and processing an invention (utility model) patent of Ukraine for international PCT application transition to the national phase is summarised in the Table below:
Table
| Description of service | Governmental fee, USD | Company services, USD | |
| If the inventor is the applicant | If a legal entity is the applicant | ||
|
1. Filing the application: - if the invention has no more than 3 claims - additionally for each claim in excess of three |
2.00 1.00 |
40.00 4.00 |
500.00 - |
| 2. Filing a request on claiming a convention priority | 1.00 | 5.00 | 40.00 |
| 3. Filing a request on accelerated processing of the application by the Patent Office of Ukraine | 200.00 | 200.00 | 60.00 |
|
4. Filing a request on making amendments to application materials: - for entering each additional claim - for entering each additional independent claim |
2.00 1.00 8.00 |
40.00 4.00 150.00 |
120.00
|
|
5. Filing a request on entering the following amendments to application materials: - applicant's name (description) - applicant's address - representative's address - assignment of application rights to another applicant |
1.00 1.00 1.00 30.00 |
5.00 5.00 5.00 30.00 |
40.00 40.00 40.00 90.00 |
| 6. Filing a request on accelerated publication of an invention application | 1.00 | 15.00 | 30.00 |
|
7. Filing a request on performing a qualifying examination (as to substance) of an invention application): - in case of one independent claim - additionally for each independent claim |
10.00 10.00 |
150.00 150.00 |
125.00 - |
| 8. Drafting a response to an inquiry or decision of the Patent Office of Ukraine during the qualifying examination | min 150.00 | ||
| 9. Transforming an invention application to a utility model one | 2.00 | 20.00 | 130.00 |
| 10. Prolonging the term of responding to an inquiry of the Patent Office of Ukraine | 2.00 | 20.00 | 40.00 |
|
11. Patent granting: - publishing a patent with no more than 15 sheets - additionally for each sheet in excess of 15 - issuing the original of the invention (utility model) patent |
1.00 1.00 100.00 |
10.00 1.00 100.00 |
125.00 |
Bear in mind that the above Table is not an exhaustive description of actions required during the national phase of patenting an international PCT application in Ukraine. It shows actions encountered most often when an invention or utility model application is filed and processed in Ukraine. Hence, prior to starting work on transition to the national phase of filing an international РСТ application in Ukraine, we review each specific inquiry. This is followed by a proposal considering a variety of options of filing an application in Ukraine, and compiling a cost estimate depending on the chosen option of document processing.
Inventa's experts offer an entire range of services for transition of an international PCT application to the national phase in Ukraine.
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