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Article on the territory of the patent (by Ukrainian law firm)

Alyona Lytvyn, lawyer of law firm “Pravova Dopomoga”, wrote the article about territory that is covered by patents for “Yurydychna gazeta” newspaper.

The article was published on the 21st of May 2013 in the issue number 21.

The territory covered by patent rights to an object of industrial property.

Unabridged text of the article:

“If a particular invention is not yet invented and patented in Ukraine, it will be possible to obtain patent rights to it even despite the fact that in other countries such invention is already known to the society”. Is it really so?

Article 4’bis of The Paris Convention for the Protection of Industrial Property dated the 20th of March 1883 (hereinafter – the Convention) provides that: “Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not.

(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the sense that patents applied for during the period of priority are independent, both as regards the grounds for nullity and forfeiture, and as regards their normal duration.”(Ukraine has joined the mentioned Convention on the 25th of December 1991).

Thus, a patent (patent rights) has territorial nature and covers exclusively territory of the state the intellectual property authority (hereinafter – the establishment) of which issued the patent for a defined object of industrial property.

However absence of patent issued by the establishment of a particular country does not guaranty its obtainment. This is due to the Article 6 of Law of Ukraine “On protection of rights to inventions and utility models”, Article 465 of the Civil Code of Ukraine and regulations of the Convention which provide that protection of exclusive intellectual property rights to industrial property objects is possible since the moment of submission of application for patent obtainment and is in force for a certain period of time. Such period is set by means of international agreements and national legislation of the country the establishment of which receives the application. The date when the establishment receives documents (that are in compliance with national legislation, the Convention and other international agreements) is recognized as the moment of application submission.

Thus, the chance of patent obtainment for a particular intellectual property object can be lost even if at the moment of application submission no other person has patent rights to the same object.

It is important to mention the priority right when talking about protection of intellectual rights to industrial property objects. Thus, Article 4 A. of the Convention and Article 15 of the Law of Ukraine “On protection of rights to inventions and utility models” provide that any person who has duly submitted an application for obtainment of patent for invention, utility model, industrial design or trade mark in one of countries of the Union or a legal successor of the person has the priority right to submit his application in other countries within term that is set by the Convention. Thus, existence of the priority regarding a certain industrial property object may deprive an applicant of the right to obtain patent for such object.

Thus, even though patent rights are not of international nature it is still unguaranteed that in case of absence of registered patent rights within the country one will be able to obtain a patent.

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