On 12 June 2019 the Cabinet of Ministers of Ukraine adopted Resolution № 496 on changing the fees for actions related to the protection of intellectual property rights.
The Government has significantly increased the size of official fees for inventions, utility models, industrial designs, trademarks and appellation of origin of goods, including the official fees for filing and registration of the aforesaid IP objects as well as the maintenance official fees and fees for assignment and licensing of IP rights.
The new Resolution enters into force on 19 July 2019.
Pursuant to the above Resolution, fees for actions related to the protection of intellectual property rights will be increased:
- in four times for trademarks,
- in three times for utility models, and
- in two times for inventions and industrial designs.
It should, however, be noted that the official fees for electronic filing of any of the aforesaid IP object will be 20% lower than a standard fee stipulated by the new Resolution. Such novelty is aimed to encourage the customers to use electronic filing and prosecution instead of the paper work-flow.
Among other novelties, the applicant may now either request an extension or renew the missed term to respond to the UPTO Office Action for 3 or 6 months, whereas the current procedure provides only 6 months extension / renewal term. Therefore, the fee to extend or renew the missed term for 3 months will be 2 times lower than for the 6 months term (USD 30 and USD 60 respectively).
Patent fees will practically double for inventions and triple for utility models. For example: (i) the official fee for submission of an application for invention and utility model will increase from USD 30 to USD 60 and USD 90 respectively; (ii) maintenance fee for the validity of patent for inventions will be increased by two times during the first years and by almost ten times after the 20th year.
Fees for actions related to protection of industrial designs will also double. Thus, the fee for filing of an industrial design application will increase to USD 60 compared to the current fee in the amount of USD 30.
The fees for trademark protection have been significantly increased in four times almost for all actions related to trademark registration, prosecution and renewal. As such, in order to file a trademark application in one class the official fee in the amount of USD 160 will apply, whereas the current filing fee is USD 40; renewal fee will be increased from USD 120 to USD 470; fees for recording assignment of rights will amount to USD 100 compared to the existing USD 25.
The good exception here is the opposition filing fee which has been increased in two times only from USD 40 to USD 80. By such exception the Resolution encourages the right holders to effectively protect their trademark rights on the stage of trademark registration and, therefore, to reduce the number of cases which potentially may lead to litigation procedure.
Separate fee is being introduced for limitation of the list of the applied goods and/or services, which will amount to USD 60.
The purpose of such changes is to update the level of fees for registration and protection of intellectual property rights in accordance with the economic realities in Ukraine. In its turn, it will provide additional resources to improve the quality of services for the protection of intellectual property rights, as well as to satisfy the needs for improving and modernizing the system of intellectual property rights protection in Ukraine.
These changes will also contribute to the creation of online registers of IP Objects (patents and certificates), and additional resources will enable the launch of an electronic system to provide citizens with high quality administrative services, as well as to protect the interests of business entities, which use intellectual property in their business activities.
This LEGAL ALERT is issued to inform Baker McKenzie clients and other interested parties of legal developments that may affect or otherwise be of interest to them. The comments above do not constitute legal or other advice and should not be regarded as a substitute for specific advice in individual cases.