From the first articles, Draft Law of Ukraine “On Amendments to Some Legislative Acts of Ukraine on Improving the Legal Protection of Intellectual (Industrial) Property” No. 5699, dated 23.01.2017 (the draft) looks like a dejavu. You have a feeling that you’ve seen something similar before. Of course, there was the State Intellectual Property Service (SIPS) of Ukraine (previously, a department).
In general, there is something to remember. The same two-tier system: the Ministry, followed by an institution. The same way, an institution registers and issues documents…. However, where is Ukrpatent, the examination authority? Apparently, it is part of a set of scientific, educational, information and other state enterprises, institutions and organizations of respective specialization, which are part of the management of a central body of executive power.
The question arises: why should we go back to the future? According to the explanatory note to the draft, its purpose is to create an optimal, high-quality and efficient state system of legal protection of intellectual property, capable of designing and implementing a transparent public model to overcome the existing challenges and risks and to offer effective tools of intellectual property as incentives for the development of related economic and social factors.
As stated in the explanatory note, adoption of the law “will ensure the fulfilment by Ukraine of requirements under the Association Agreement to harmonize the Ukrainian legislation on protection of rights in trade marks and industrial designs with EU legislation, as well as the functioning of an effective mechanism for combating ‘patent trolling’ through introduction of an administrative appeal procedure for issued industrial design patents (‘post-grant opposition’)”.
However, it is interesting to note that the Ukraine – EU Accession Agreement does not specify the list of EU legislation on intellectual property rights to be implemented by Ukraine; so, in this regard, Ukraine has an obligation only in terms of implementing relevant provisions of the Agreement.
The Committee on European Integration noted in the conclusion that the draft does not contradict the EU law and the obligations of Ukraine in accordance with the Ukraine – EU Agreement, but does not take into account certain provisions of the EU legislation.
In accordance with the conclusion of the Ukrainian Parliament Committee on Legal Policy and Justice, dated 22.02.2017, the draft does not contradict provisions of the Constitution of Ukraine. At the same time, in accordance with the conclusion of the Main Scientific and Expert Administration, dated 16.05.2017, amendments to Paragraph 1 of Article 8 of the Law of Ukraine “On the Protection of Rights in Industrial Designs” are not fully consistent with Article 54 of the Constitution of Ukraine. The draft also has some inaccuracies and typos.
In general, all conclusions propose, based on the results of the first reading, to adopt the draft as a basis, taking into account the outlined reservations and proposals. However, something went wrong, that’s why, on 04.09.2018, the voting on the bill failed.
Let’s see what will happen next…
Alexander Molotai, Partner, Head of Intellectual Property, exclusively for “Yurydychna Gazeta”