The European Council granted Ukraine EU candidate status on 23 June 2022. Will patents granted by the European Patent Office soon also apply in Ukraine? Not immediately, because on the one hand the candidate status legally creates neither rights nor obligations. In addition, the European Patent Organisation (EPO) is a supranational organisation independent of the European Union (EU). On the road to membership, however, the EU is demanding numerous adjustments from Ukraine, including in patent law. So there is movement in Ukrainian patent law.
Ukraine as a member state of the EPO
Will Ukraine's path to the EU also lead to accession to the EPO? Membership of the EPO is not a direct prerequisite for EU accession. However, there is no member state of the European Union that is not also a member of the EPO. There is therefore a presumption that Ukraine will be no different. This is also supported by the approximation to the provisions of the European Patent Convention introduced in Ukraine in 2020. For example, the previously non-existent possibility of opposing a newly granted patent was created. The Ukrainian Patent Office and the European Patent Office also signed a Memorandum of Understanding on an enhanced partnership agreement in mid-July 2022. Since 2004, all states had concluded an extension or, in the case of Moldova, a validation agreement with the EPO before they were granted EU candidate status, on average almost ten years earlier. Ukraine was different: it was granted EU candidate status even though it had not previously concluded such an extension or validation agreement with the EPO. It therefore stands to reason that the EPO and Ukraine will do this in the foreseeable future and conclude a validation agreement.
Patents must initially continue to be registered in Ukraine
On average, a good two and a half years elapse between the conclusion of the negotiations and the entry into force of the validation agreement, during which the provisions of the validation agreement are transposed into national law. Only patent applications filed from the effective date of entry into force are subject to the possibility of validation in the contracting state. At least that was the case in all previous extension and validation agreements. For applicants, this means that they will still have to file patent applications that are to take effect in Ukraine with the competent authority in Ukraine (currently UkrNOIPI) for the foreseeable future, or initially as PCT applications with a later Ukrainian national phase.
Applications filed with the EPO with a delay
However, once negotiations on the validation agreement have been concluded and the date of its entry into force approaches, applicants can delay the application and file it with the EPO only after the validation agreement has entered into force. In certain cases, this will be useful, as it will allow you to validate the European patent for Ukraine after grant, without making a separate national application or initiating a Ukrainian national phase.
This newsletter takes into account valuable information that we have received from our colleague Julia Semeniy (julia.semeniy(at)asterslaw.com). She is a Ukrainian patent attorney and attorney-at-law of the law firm Asters in Kyiv, with whom we have been cooperating for many years. Mr. Kolja Lagemann, engineer and law student at Bucerius Law School, also contributed significantly to this article during his internship in summer 2022.