Provides advice on IPR protection, including information on the registration of patents and trademarks.
Several general principles are important for effective protection of intellectual property (“IP”) rights in Ukraine. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Ukraine than in the United States. Third, rights must be registered and enforced in Ukraine under local laws. For example, your United States trademark or patent registrations will not be enforceable in Ukraine, without applying for such rights in Ukraine.
A patent for an invention can be obtained by filing a patent application with the Ukrainian Intellectual Property Institute (Ukrpatent),which is within the Ministry of Economy. Ukraine is a “first-to-file” country, which means that the first person or entity to register the patent becomes the title holder. A registration for a trademark or design can be obtained by filing such applications with Ukrpatent. Similarly, most trademark and design rights are based on a first-to-file registration system. Therefore, you should consider how to obtain patent, design, or trademark protection before introducing your products or services into the Ukrainian market. Better yet, you should consider having an IP strategy for the whole world even before making your IP public in any country to ensure that you do not lose the rights outside the United States.
It is vital that companies understand that intellectual property rights are primarily private rights and that the United States government cannot enforce them for private entities or individuals in Ukraine. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant. Companies may wish to seek advice from local legal counsel or IP consultants who are experts in Ukrainian law. While the United States government stands ready to assist, there is little that can be done if the rights-holders have not taken these fundamental steps necessary to secure and enforce their IP in a timely fashion. Moreover, rights holders who delay enforcement of their rights may find that their rights have been eroded or abandoned due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit.
In all commercial arrangements, it is always advisable to conduct due diligence on potential business partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. In formalizing business relationships, work with legal counsel familiar with Ukrainian law to create a solid contract with confidentiality and non-disclosure provisions. Such contractual clauses are important to safeguard a company’s proprietary information and trade secrets from misappropriation.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP. There are a number of these industry organizations, both in the U.S. and Ukraine, including the American Chamber of Commerce in Ukraine (AmCham Ukraine).
A wealth of information on protecting IP is freely available to United States rights holders. Some excellent resources for companies regarding IP issues, include the following:
For information about the enforcement of patents, trademarks, or copyrights in the United States and in foreign countries, please call the STOP! Hotline at: 1-866-999-HALT.
For information about registering trademarks, obtaining designs or utility patents, in the United States or in foreign countries, please contact the U.S. Patent and Trademark Office at: 1-800-786-9199.
For more information about how to evaluate, and protect, and enforce intellectual property rights and how these rights may be important for your business, please visit the “Business Guide” section of the STOPfakes.gov, or please contact:
Steven Mitchell, Director
Office of Standards and Intellectual Property Rights
International Trade Administration
The U.S. Department of Commerce has positioned IP attachés in key markets around the world.
For Ukraine, please contact:
Intellectual Property Attaché for Eurasia
U.S. Embassy Kyiv
To access Check Republic’s’ ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.