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Publication date: 23.05.2024
lawyer, 23 years of experience in enforcement.
Qualification examination of an application for the issuance of a patent for an invention
If the application for the issuance of a patent for an invention contains all the necessary documents, the requirements for them are met, and the claimed invention does not belong to the list of objects that are not protected, the applicant is sent a notice of the completion of the formal examination (see the procedure Formal examination of the application for the issuance of a patent for invention) and the possibility of conducting a qualification examination of the application.
The qualification examination is carried out on the condition that the applicant submits a request for it and a document on the payment of the fee. The procedure for paying the fee and its amount is determined by the Resolution of the Cabinet of Ministers of Ukraine "On approval of the Procedure for paying fees for actions related to the protection of rights to intellectual property objects" dated 12.23.2004 No. 1716.
According to Art. 16 of the Law of Ukraine "On the Protection of Rights to Inventions and Utility Models" dated 15.12.1993 No. 3687-XII, a request for a qualification examination of an application for a patent for an invention may be submitted no later than 3 years from the date of submission of the application. The term is extended to 6 months, subject to submission of a petition and payment of the appropriate fee.
The petition may be filed by another interested person within 3 years from the date of publication of information about the application.
According to the provisions of Clause 6.6 of Rules No. 197, during the qualification examination, Ukrpatent has the right to send the applicant requests for the provision of additional materials, without which the examination, including the preparation of a conclusion on the compliance of the invention with the conditions of patentability and the decision to issue or refuse to issue a patent, is impossible
The date of the start of the qualification examination of an application for the issuance of a patent for an invention is considered the date of receipt of the request for its conduct, and if this request was received before the completion of the formal examination, then the date of completion of the formal examination.
Provided the request is received and the fee is paid, a patent search is conducted to determine the level of technology. Patent search is carried out using the patent information base of Ukrpatent.
If the applicant has submitted a search report conducted by a competent International Searching Authority, only those information that were not discovered by such authority shall be searched. The examination fee is reduced in proportion to the performed search (Clause 6.2.6 of Rules No. 197).
During the verification of the claims, the presence of essential features of the claimed object, the totality of which is sufficient to achieve the technical result specified by the applicant, is determined.
The specifics of the verification of the claims are defined in Clause 6.4 of Rules No. 197.
If signs of its inconsistency are detected during the verification of the formula, then in accordance with the provisions of Clause 6.4 of Rules No. 197, a notice is sent to the applicant with a proposal to eliminate the said inconsistencies.
During the examination of the declared invention to the conditions of patentability, the conformity of the invention to the conditions of industrial suitability, novelty and inventive step is established, as well as an additional examination of the conformity of the invention to the conditions of granting legal protection is carried out in accordance with Part 1-3 of Art. 6 of Law No. 3687-XII.
It includes:
- verification of industrial suitability;
- novelty check;
- verification of inventive step.
Specifics regarding each level of implementation of this stage of the qualification examination are fixed in Clause 6.5 of Rules No. 197.
Based on the results of the qualification examination, Ukrpatent makes a decision to issue a patent for an invention or a preliminary decision to refuse to issue a patent.
If, based on the result of the qualification examination of the application, it is determined that the invention does not meet the conditions of patentability, the applicant is sent a preliminary decision on the refusal to issue a patent for the invention.
The grounds for making such a decision are set out in Clause 6.7.2 of Rules No. 197.
According to Clause 6.9 of Rules No. 197, if the claimed invention meets the conditions of patentability and granting legal protection, Ukrpatent prepares a final opinion, based on which a decision is made to issue a patent for the invention.
According to Clause 6.9 of Rules No. 197, this decision is sent to the applicant.
In accordance with Part 2 of Art. 22 of Law No. 3687-XII, the state registration of a patent for an invention is carried out in the presence of documents on the payment of the state duty for its issuance and the fee for publications on the issuance of a patent. The specified duty and fee are paid after the applicant receives a decision on the issuance of a patent.
The size and order of payment is established by Order No. 1716.
According to Clause 7.2 of Rules No. 197, additional materials submitted by the applicant for a preliminary decision on refusal to issue a patent for an invention must be received within 2 months from the date of receipt of the preliminary decision.
The verification of the materials added by the applicant is carried out in accordance with the provisions of Clause 7 of Rules No. 197
According to Clause 6.8 of Rules No. 197, if, taking into account the changes and additional materials provided by the applicant in response to the previous refusal decision, a final conclusion is made that the invention does not comply with at least one of the conditions for patentability or granting legal protection, a decision is made to refuse the issuance of a patent, in which relevant justifications are given.
According to Clause 6.9 of Rules No. 197, if the claimed invention meets the conditions of patentability and granting legal protection, Ukrpatent prepares a final opinion, based on which a decision is made to issue a patent for the invention.
On the basis of the decision to issue a patent, the state registration of the patent is carried out, for which the relevant information is entered into the State Register of Patents and Declaratory Patents of Ukraine for Inventions.
According to Part 2 of Art. 22 of Law No. 3687-XII, if within 3 months from the date of receipt of the decision to issue a patent to the applicant, the documents on the payment of fees for the issuance of the patent and the publication on the issue have not been received, state registration shall not be carried out (the period may be extended to 6 months, subject to submission request for extension and payment of fees for submitting this request).
Simultaneously with the state registration of a patent for an invention, information on the issuance of a patent is published in the official bulletin of the Ministry of Economic Development, Trade and Agriculture.
According to Art. 25 of Law No. 3687-XII, the issuance of a patent is carried out by the central executive body implementing the state policy in the field of intellectual property. Such a body is the Intellectual Property Department of the Ministry of Economic Development and Trade of Ukraine.
A patent is issued within a month after its state registration.
A patent is issued to a person who has the right to receive it. If several persons have the right to receive the same patent, they shall be issued one patent (Part 1, Article 25 of Law No. 3687-XII).
The appeal of the decisions made on the application takes place in accordance with the procedure of Art. 24 of Law No. 3687-XII.
According to the provisions of Art. 6 of the Law, the term of validity of a patent is 20 years from the date of submission of the application to the institution.
Legal service "Consultant" will provide professional assistance in the preparation of documents for obtaining a patent for an invention, as well as help in solving the following issues: alcohol license, fuel storage license, medical practice license, electricity supply license, international transport license , beer license, license for taxi, etc.
