A patent holder has three ways of capitalising on one’s patent: use it oneself, lease it (i.e. grant a license) or sell it.
Hence, the owner of an invention (utility model) patent is granted the property right to dispose of one’s own invention, using it in one’s own production, as well as assigning rights to third parties to use it.
Granting exclusive property rights in an invention is effected by the following agreements on disposal of property rights in an invention:
License agreement for using an invention;
Agreement on the assignment of exclusive property rights in an invention.
Each of the above agreements has its own specific features, e.g., an agreement on assigning exclusive property rights in an invention is subject to state registration, whereas a license agreement can undergo state registration in Ukraine as elected by one of the parties to the license agreement.
For state registration in Ukraine of the aforementioned agreements, the patent holder should provide us with the following documents:
Three copies of the signed agreement (or extracts from an agreement);
One copy of a power of attorney for exercising agency rights related to state registration of the agreement.
Next, the package of documents we have prepared is sent to the Patent Agency of Ukraine for registration.
The term of state registration of an agreement is 2 months from the date when the Patent Agency of Ukraine has received a complete package of documents.
During state registration of the agreement, the Patent Agency examiner will analyse the package of documents received. It must include the following documents:
Three copies of the agreement;
A petition for agreement registration;
A power of attorney for document processing; and
A document proving payment of a governmental fee for agreement registration.
The governmental fee for agreement registration depends on the number of patents indicated in the agreement.
In the event of incompliance of the received file of documents with the requirements of Ukrainian legislation, the Patent Agency examiner will send an inquiry to the patent holder, and gives two months for making corrections in the documents indicated. The term for responding to the inquiry cannot be prolonged. If no response will be received, the examiner makes a decision on rejecting agreement registration and returns the received package of documents to the agent of the patent holder.
When the Patent Agency receives a response to the inquiry, the examiner has two weeks at his disposal to analyze the response and agree with the arguments received or make a decision on rejecting agreement registration.
If the examiner shall decide on state registration of the agreement, the following actions are taken:
A decision on state registration of the agreement is drafted;
The decision is published in the Official Bulletin of Ukraine for Intellectual Property;
Two copies of the agreement are securely bound and notarised officially, and sent to the patent holder's agent. One copy of the agreement is retained by the Patent Agency of Ukraine, and is used in case the Parties to the agreement will lose the agreement. They can request a copy of the agreement retained by the Patent Agency for themselves or to present it in case of a judicial dispute;
A copy of the decision on state registration is prepared and published in the Official Bulletin, and send to the holder's agent.
Materials on state registration of the agreement are sent to the applicant after information about the agreement has been published in the Official Bulletin.
Inventa's experts perform all actions related to processing cases in disposal of rights in inventions of Ukraine.
The following Table summarises legally relevant actions related to disposal of property rights in inventions of Ukraine.
|Description of legally relevant actions||Governmental fee, USD||Company services, USD|
|1. Preparing and submitting documents related to assignment of rights in an invention patent of Ukraine||40.00||135.00|
|2. Preparing and submitting documents related to state registration of a non-exclusive or exclusive license for an invention patent of Ukraine||40.00||135.00|
|3. Preparing and submitting documents related to making amendments to the State Registry on the license granted||40.00||135.00|
|4. Filing a request for an extract on the legal status of an invention patent of Ukraine||10.00||60.00|
|5. Filing a request for a copy of the registered agreement on disposal of rights in an invention of Ukraine||10.00||60.00|
Note: here and in the following, the term “invention” is meant to be “invention and/or utility model”.