(213) Regarding Industrial Property Protection in Ukraine The following announcement of Ukraine was furnished by the World Intellectual Property Organization of Geneva, Switzerland. ANNOUNCEMENT ON THE PROVISIONAL REGULATION CONCERNING THE LEGAL PROTECTION OF INDUSTRIAL PROPERTY IN UKRAINE The President of Ukraine, by his Decree of Sept. 18, 1992, approved the Provisional Regulation on Legal Protection of Objects of Industrial Property and Rationalization Proposals in Ukraine ("Regulation"). The Regulation entered into force on Sept. 18, 1992. The situation of industrial property protection in Ukraine, as resulting in particular from the transitional provisions of the Regulation, is summarized below. I. The Transitional Provisions Concerning Priority and, in Respect of Applications for Patents of Inventions, the Carrying Out of Examination (1) Any priority claimed within six months from the entry into force of the Regulation, i.e. until Mar. 18, 1993, on the basis of the first filing in a State party to the Paris Convention for the Protection of Industrial Property, will be recognized even if it is claimed after twelve months from the first filing in the case of patents for inventions, or six months from the first filing in the case of industrial designs or trademarks, provided that it is claimed not later than twenty-seven months from the first filing in the case of patents for inventions, or not later than twenty-one months from the first filing in the case of industrial designs and trademarks. (2) The applicant or any other person may submit to the State Patent Office of Ukraine within five years from the filing date a request for the substantive examination of an application for a patent for invention. The request must be accompanied by a search report established by an International Searching Authority under the Patent Cooperation Treaty (PCT) or an organization registered with the State Patent Office of Ukraine as a Searching Authority, or by evidence that an action to grant a patent has been taken by a Patent Office which has a substantive examination system for granting patents. II. Applications for Industrial Property Rights Filed with the Patent Office of the Soviet Union (3) An applicant of an application for a patent for invention, for an inventor's certificate, for an industrial design patent or certificate or for a trademark certificate filed with the Patent Office of the Soviet Union may request the State Patent Office of Ukraine within six months from the date of entry into force of the Regulation, i.e., until Mar. 18, 1993, that the said application be further processed according to the Regulation. The request must be accompanied by a copy of said application, including a copy of the request showing the filing date as sent back by the Patent office of the Soviet Union to the applicant, and by any available evidence showing that the said application still had effect on Dec. 24, 1991. The filing date and any priority date of the said application will be maintained. III. Industrial Property Rights Granted by the Patent Office of the Soviet Union (4) Patents for inventions, industrial design patents and trademark certificates granted by the Patent Office of the Soviet Union prior to Dec. 25, 1991, will, after their registration by the State Patent Office of Ukraine at the request of the owner and upon furnishing of a document for payment of the prescribed fee (see paragraph (11), below), be considered as having the same effects for the remaining period of their validity as a patent for invention, industrial design patent or trademark certificate granted in accordance with the Regulation by the State Patent Office of Ukraine. The duration of the said validity is 20 years from the filing date of the application in the case of a patent for invention, 15 years from the filing date of the application in the case of an industrial design patent and, in the case of a trademark certificate, 10 years from the filing date of the application (if the period of validity of the certificate had not yet been extended by Dec. 24, 1991) or from the date of the request for extension of the period of validity (if the period of validity of the certificate had already been extended by Dec. 24, 1991). The request must be filed within six months from the date of entry into force of the Regulation, i.e., until Mar. 18, 1993, and must be accompanied by a copy of the patent or certificate granted by the Patent Office of the Soviet Union. (5) As regards inventors' certificates and industrial design certificates granted by the Patent Office of the Soviet Union in relation to which a 20-year term in the case of inventions, or a 15-year term in the case of industrial designs, both counted from the filing date of the application, has not expired before the entry into force of the Regulation, i.e., prior to Sept. 18, 1992, the State Patent Office of Ukraine will grant, at the request of the inventor (inventors) and with the consent of the applicant, a Ukrainian patent to the inventor himself, or to any other physical or legal person, with their consent, indicated in the request, or to the Ukrainian Inventions Foundation. In the case of inventions, if the said request is not made within the period of one year after the entry into force of the Regulation, i.e., until Sept. 18, 1993, inventors' certificates granted by the Patent Office of the Soviet Union shall be exchanged for Ukrainian patents granted to the Ukrainian Inventions Foundation. Any Ukrainian patent to which this paragraph applies will be valid until the expiration of 20 years from the filing date of the application in the case of inventions, and 10 years from the filing date of the application, with an opportunity of subsequent extension, upon request of the owner, but not longer than for another 5-year period in the case of industrial designs. IV. Effects in Ukraine of International Applications under the Patent Cooperation Treaty (PCT) (6)(a) On Sept. 21, 1992, Ukraine deposited a declaration of continuation the effect of which is that the Patent Cooperation Treaty (PCT) is applied by Ukraine. Nationals and residents of Ukraine can therefore file international applications, and Ukraine can be designated and elected in international applications filed, from that date. (b) On Sept. 29, 1992, the Assembly of the PCT Union adopted, with effect on Oct. 1, 1992, new Rules 32.1 and 32.2 in the Regulations under the PCT, concerning the extension of international applications to certain successor States. (c) For the purpose of determining the status of international applications with respect to Ukraine, one has to distinguish between (i) international applications designating the Soviet Union whichwere filed prior to Dec. 25, 1991 (see (d), below); (ii) international applications--irrespective of the designations, they contain--which were filed between Dec. 25, 1991, and Nov. 23, 1992 (see (e) to (g), below); (iii) international applications designating Ukraine filed on or after Sept. 21, 1992 (see (h), below). (d) As regards any international application whose international filing date is prior to Dec. 25, 1991, and in which the Soviet Union has been designated, the "national filing effect" of any such application under Article 11(4) of the PCT will, pursuant to the deposit by Ukraine of its declaration of continuation, be recognized in Ukraine (provided that the internationalapplication has not lost its effect in the Soviet Union by Dec. 24, 1991). The conditions under which any such international application, or any patent or inventor's certificate resulting therefrom and granted by the Patent Office of the Soviet Union, may continue to have effect in Ukraine are the following: (i) if a patent for invention or an inventor's certificate has been granted by the Patent Office of the Soviet Union on the basis of the international application, the conditions described in paragraphs (4) and (5), above, are applicable; (ii) if the applicant has entered the national phase before the Patent Office of the Soviet Union but a patent for invention or an inventor's certificate had not been granted by the Patent Office of the Soviet Union without the application having been rejected by that Office, the applicant must, until Mar. 18, 1993, --furnish to the State Patent Office of Ukraine a copy of the Russian translation submitted to the Patent Office of the Soviet Union and any available evidence showing that the application still had effect on Dec. 24, 1991, --file the request referred to in paragraph (3), above, with the State Patent Office of Ukraine, and --furnish to the State Patent Office of Ukraine a document for payment of the prescribed fee (see paragraph 11, below); (iii) if the applicant has not entered the national phase before before the Patent Office of the Soviet Union and the time limit for entering the national phase before that Office had not expired on Dec. 24, 1991, the applicant must, until Mar. 18, 1993, furnish to the State Patent Office of Ukraine a translation of the international application into Ukrainian or Russian and a document for payment of the prescribed fee (see paragraph 11, below). (e) As regards any international application whose filing date is later than Dec. 24, 1991, and earlier than Nov. 24, 19921, its effects may be extended to Ukraine (irrespective of the designations it contains) through the performance by the applicant of the following acts: (i) filing with the International Bureau of the World Intellectual Property Organization (WIPO) a request for extension; (ii) paying to the International Bureau of WIPO an extension fee of 185 Swiss francs, payable in Swiss francs. (f) The applicant in respect of each and every international application referred to in (e), above, or his agent or common representative if there is one, will receive a written notification from the International Bureau of WIPO calling his attention to the fact that he can, by filing a written requests for extension, extend the effects of the international application to Ukraine. The notification will, in particular, specify the modes of payment of the extension fee of 185 Swiss francs. the request for extension must contain the identification of the international application by its international application number. A form which may be used for the purpose of requesting the extension to Ukraine will be attached to the notification. The request for extension must be in English or French, and may be sent by telefax or telex. The request for extension and the corresponding payment must reach the International Bureau of WIPO before the expiration of three months from the date of the notification sent by the International Bureau of WIPO; if either the request or the fee is received later, the request will be refused. It is recommended that applicants await the notification from the International Bureau of WIPO and use the form attached to it, but requests and payments may be made without waiting for the notification from the International Bureau of WIPO. (g) If the conditions described in (e) and (f), above, are fulfilled, Ukraine will be considered as having been designated in the international application on its international filing date. For entering the national phase before the State Patent Office of Ukraine, the applicant must furnish to that Office a translation of the international application into Ukranian or Russian and a document for payment of the prescribed fee (see paragraph 11, below) until Dec. 31, 1993, or within the following time limit if that time limit expires after Dec. 31, 1993: (i) before the expiration of 21 months from the priority date if Ukraine is not elected under Chapter II of the PCT within 19 months from the priority date; (ii) before the expiration of 31 months from the priority date if Ukraine is elected under Chapter II of the PCT within 19 months from the priority date. (h) As regards any international application whose international filing date is later than Sept. 20, 1992, and in which Ukraine has been designated, the applicant, in order to enter the national phase before the State Patent Office of Ukraine, must furnish to that Office a translation of the international application into Ukrainian or Russian and a document for payment of the prescribed fee (see paragraph 11, below) to that Office within the following time limit: (i) before the expiration of 21 months from the priority date if Ukraine is not elected under Chapter II of the PCT within 19 months from the priority date; (ii) before the expiration of 31 months from the priority date if Ukraine is not elected under Chapter II of the PCT within 19 months from the priority date. V. Effects in Ukraine of International Registrations under the Madrid Agreement Concerning the International Registration of Marks (7)(a) On Sept. 21, 1992, Ukraine deposited a declaration of continuation the effect of which is that the Madrid Agreement Concerning the International Registration of Marks is applied by Ukraine. (b) On Sept. 29, 1992, the Assembly of Madrid Union adopted, with effect on Oct. 1, 1992, a new Rule 38 in the Regulations under the Madrid agreement, concerning the effect of international registrations in certain successor States. (c) Pursuant to the deposit of the declaration of continuation and to the decision of the Assembly, certain international registrations may have effect in Ukraine subject to the conditions described below. Those international registrations are those which have territorial extension to the Soviet Union effective from a date prior to Dec. 25, 1991. (d) The conditions referred to above are the following: (i) the filing with the International Bureau of the World Intellectual Property Organization (WIPO) of a request; (ii) the payment to the International Bureau of WIPO of a fee, the amount which is 62 Swiss francs per international registration. (e) The owner of each and every international registration concerned, or his representative (if the owner has a representative whose name appears in the International Register), will receive a written notice from the International Bureau of WIPO calling his attention to the fact that he can, by filing a written request, continue the effect of the international registration to Ukraine. The notice will, in particular, specify the modes of payment of the fee. The request must contain the identification of the international registration concerned by its international registration number. A form (in French) will be attached to the notice and may be used. The request must be in English or French, and may be sent by telefax or must reach the International Bureau of WIPO before the expiration of six months from the date of the notice sent by the International bureau of WIPO; if either the request or the fee is received later, the request will be refused. Requests and payments may be made without waiting for the notice of the International Bureau of WIPO. (f) If the conditions described above are fulfilled, the international registration concerned will, with respect to Ukraine, have effect as from the effective date of the territorial extension to the Soviet Union and benefit from any priority validly claimed in regard to such extension. (g) For each international registration which has no territorial extension to the Soviet Union or whose international registration date is later than Dec. 24, 1991, protection in Ukraine can only be obtained by filing, through the intermediary of the national Office of the country of the owner, a request for territorial extension under Rule 20 of the Regulations under the Madrid Agreement. it is to be noted that requests for territorial extension to Ukraine are possible at present. VI. Prior User Right (8) Enterprises, organizations and institutions which have already started to use inventions or industrial designs for which protection can be obtained according to paragraph (5), above, prior to the entry into force of the Regulation, i.e., prior to Sept. 18, 1992, will have the right to a continued use of such inventions and industrial designs, but without increasing the volume of their utilization. VII. New Applications (9) From the date of entry into force of the Regulation, i.e. from Sept. 18, 1992, onward, applications for patents for inventions, for industrial design patents and for trademark certificates can be filed with the State Patent Office of Ukraine. The request as a part of the application must be filed in Ukrainian and be accompanied on the filing date by the prescribed fees. Other parts of the application may be presented in Ukrainian or Russian. they may also be presented in English, French or German, provided that a translation into Ukrainian is presented upon request of the state Patent Office of Ukraine VIII. Procedural Provisions (10) If an applicant does not have his ordinary residence or principal place of business in Ukraine, he must authorize a representative in Ukraine, and all applications and requests referred to in the present announcement must be filed through the intermediary of such a representative. The list of the persons who can act as representatives is available at the State Patent Office of Ukraine. (11) The amounts of the fees which are referred to as "prescribed fees" in the present announcement as well as the kind of document which constitutes a "document for payment of the prescribed fee" will be published in a separate announcement. IX. Address of the Patent Office State Patent Office of Ukraine 4, Karl Leibknecht Street 252008 Kiev Ukraine Tel.: (7044) 293-2188 Fax.: (7044) 268-2588 Dec. 11, 1992 DOUGLAS B. COMER Acting Assistant Secretary and Acting Commissioner of Patents and Trademarks [1146 TMOG 680] 1With the exception of any such international application whose international filing date is later than Sept. 21, 1992, and in which Ukraine has been designated under Rule 4.9(a) of the Regulations under the PCT: in such a case, the procedure described in (e) to (g) is not applicable, and the procedure described in (h) is applicable. It should be noted that only those international applications filed on or after Sept. 21, 1992, can specifically designate Ukraine.