Publication date: 23.05.2024
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Preliminary examination and determination of the date of submission of an application for the issuance of a patent for an invention
Before starting the patenting procedure and submitting an application for the issuance of a patent for an invention, it is necessary to check the compliance of the invention with the conditions for granting legal protection and patentability.
These conditions are established by Art. 6-7 of the Law of Ukraine "On Protection of Rights to Inventions and Utility Models" dated December 15, 1993 No. 3687-XII.
The circle of persons who have the right to receive a patent is defined by Art. 8-11 of Law No. 3687-XII.
A person who wishes to receive a patent and has the right to do so submits an application to the Ukrainian Institute of Intellectual Property (Ukrapatent).
In accordance with Part 5 of Art. 12 of Law No. 3687-XII, the application is written in Ukrainian and must contain:
- an application for the issuance of a patent for an invention;
- description of the invention;
- the formula of the invention;
- drawings (if there is a reference to them in the description);
- abstract.
The detailed procedure and features of drawing up and filing an application for the issuance of a patent are contained in the Rules for drawing up and submitting an application for an invention and an application for a utility model, approved by order of the Ministry of Education and Science of Ukraine dated January 22, 2001 No. 22.
In accordance with clause 16.1 of the Rules, the application is submitted or sent directly to the address of Ukrpatent.
On behalf of the applicant, the application can be submitted through a representative. In this case, a power of attorney certifying the authority of the representative is attached to the application.
Part of the 11th Art. 12 of Law No. 3687-XII establishes that a fee is payable for submitting an application. The fee payment document must be sent to Ukrpatent together with the application or within 2 months after the application submission date. This term is extended, but for no more than 6 months, if a corresponding petition is submitted and the fee for its submission is paid before it expires. If the applicant has exemptions from the payment of fees, a document confirming such exemptions is checked.
The detailed procedure for the payment of fees for submitting an application for the issuance of a patent for an invention is established by the Resolution of the Cabinet of Ministers of Ukraine "On approval of the Procedure for the payment of fees for actions related to the protection of rights to intellectual property objects" dated 12.23.2004 No. 1716.
According to the provisions of Art. 15 of Law No. 3687-XII, the applicant has the right to the priority of the previous application for the same invention within 12 months from the date of submission of the previous application to the Ukrapatent or to the relevant body of the state that is a party to the Paris Convention on the Protection of Industrial Property, if no priority has been declared for the previous application.
For this, the applicant, within 3 months from the date of submission of the application to Ukrpatent, submits an application for priority with reference to the date and number of the previous application and its copy, if such an application has already been submitted in accordance with the Paris Convention. If the materials were submitted in violation of the deadlines, the right to priority is considered lost (if the deadlines were missed for reasons beyond the will of the applicant, they can be extended by 2 months from the date of the end of the specified deadline and on condition of payment of the corresponding fee).
In accordance with clause 2.1 of the Rules for consideration of an application for an invention and an application for a utility model, approved by the order of the Ministry of Education and Science of Ukraine dated 15.03.2002 No. 197, the application materials received by Ukrpatent are registered as follows:
- the date of receipt of the application materials is inserted, if they contain, at least, a statement on the issuance of a patent in an arbitrary form, written in the Ukrainian language;
- a registration number is assigned.
If the materials do not contain an application for the issuance of a patent in Ukrainian, they are returned to the person who submitted them.
The registered application materials are checked for the presence of a document on the payment of the application fee in the prescribed amount.
When paying the application fee in an amount less than that established for the number of claims, the applicant is notified of the need to comply with the amount of the fee by paying an additional fee or withdrawing claims.
According to Clause 2.3 of Rules No. 197, prior to setting the date of submission of the application, its preliminary review is carried out. During the preliminary examination, the application, which does not contain the applicant's proposal to classify the invention as a state secret, is examined for the presence of materials that can be classified as a state secret according to the Compendium of information constituting a state secret.
If the applicant in the application materials submitted a proposal regarding the classification of the invention as a state secret, or Ukrpatent during the examination of the application found materials that can be classified as a state secret, a state expert on secrets is determined, whose competence is assigned to consider such issues.
If, based on the result of the review, the state expert decided to classify the invention as a state secret, then the next review of the application is carried out in the secrecy mode in general, taking into account the provisions of the Law of Ukraine "On State Secrets" dated January 21, 1994 No. 3855-XII.
In accordance with Clause 2.4 of Rules No. 197, Ukrpatent makes a decision on setting the date of application submission based on the date of its receipt, if the application materials contain:
- a statement in an arbitrary form about the issuance of a patent, written in the Ukrainian language;
- information about the applicant and his address in Ukrainian;
- material giving the impression of a description of the invention;
- a part of the material that can be taken as the formula of the invention.
If by this time the applicant has not paid the fee for submitting the application, or the request for an extension of the fee payment period, the application is considered to have been withdrawn.
Provided that the application materials meet the requirements of Clause 2.4.1 of Rules No. 197, after receipt of the document on payment of the application fee, Ukrpatent sends the applicant a decision on setting the date of application submission.
If the materials do not meet the requirements established by Clause 2.4.1 of Rules No. 197, the applicant is sent a notice of the need to eliminate the inconsistencies. To eliminate them, a period of up to 2 months is given from the date of receipt of the notification by the applicant. If the inconsistencies are eliminated, the date of submission of the application is the date of receipt of the corrected materials by Ukrpatent. Otherwise, the application is considered not submitted.
According to Art. 16 of Law No. 3687-XII, after setting the date of submission of an application for the issuance of a patent for an invention, the stage of formal examination of the application begins.
For details on this stage, see procedure Formal examination of an application for the issuance of a patent for an invention.
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