Have you developed a new device, improved a production technology, or created an original technical method for solving a particular problem? In that case, it is important not only to implement your development but also to take care of its proper legal protection. After all, without formalized rights, other persons may be able to use your technical solution without the appropriate permission. How to patent your invention was explained to UNN by Alina Parkhuta, an intellectual property lawyer at the "Logic" law firm.
Patenting in Ukraine makes it possible to acquire intellectual property rights to an invention or utility model, use the development in commercial activities, transfer the rights to it to other persons, and protect one's interests against unlawful use. At the same time, as the lawyer explains, not every idea can be the subject of patenting. The choice between an invention and a utility model depends on the nature of the technical solution, as well as on the conditions for granting legal protection established by law. Therefore, even before filing an application, it is important to correctly determine the subject of patenting, assess its patentability, and prepare the documents in accordance with legal requirements.
Alina Parkhuta, family law lawyer at the "LOGIC" Law Firm
What can be patented in Ukraine
Ukrainian legislation provides legal protection for technical developments, in particular, in the form of a patent for an invention or utility model. The choice of the appropriate subject depends on the essence of the development and its characteristics.
An invention is the result of a person's intellectual, creative activity in the field of technology that meets the patentability requirements established by law.
The subject matter of an invention may be:
- a product — a device, substance, composition, microorganism strain, cell culture, etc.;
- a process (method) — a production technology, a method of processing materials, purifying water, or carrying out another technological process.
For example, an invention may be a new device for purifying water, a substance with a defined chemical composition and properties, or a technology for producing a particular product.
A utility model is a technical solution that may also receive patent protection provided it complies with the requirements established by law. Its subject matter may be a device or a process (method). For example, a utility model may be an improved design of a lighting or massage device, or a new method of performing a particular technological operation.
"It is important to understand that an abstract idea, business concept, or desired result in itself is not sufficient grounds for obtaining a patent. Legal protection is granted to a specific technical solution that meets the requirements stipulated by law. If the main value of the development lies not in its technical characteristics but in the appearance of the product, it is advisable to consider registering an industrial design. To protect a name, logo, or other designations used to distinguish goods or services from those of other persons, trademark registration is used," Parkhuta explains.
Requirements for obtaining a patent
To obtain a patent for an invention, a technical solution must meet three patentability requirements:
Novelty. An invention must be new, meaning that it must not form part of the prior art, which is taken into account in accordance with the law. During the assessment, information about the development that became publicly available before the date legally relevant for determining novelty is analyzed.
Inventive step. An invention must not be obvious to a person skilled in the relevant field in view of the known prior art. In other words, the technical solution must involve a certain creative contribution that does not follow obviously from solutions already known.
Industrial applicability. An invention must be suitable for use in industry or another field of activity.
For a utility model, the legislation establishes two patentability requirements: novelty and industrial applicability. The requirement of an inventive step does not apply to utility models.
"In addition, legislative restrictions concerning subject matter that is not eligible for legal protection must be taken into account. That is why, before preparing an application, it is advisable to conduct a preliminary analysis of the technical solution, in particular to examine known analogues and assess the prospects of obtaining a patent," the lawyer says.
Rights of a Patent Owner
"A patent is not merely documentary confirmation of the registration of a development. It certifies the acquisition of intellectual property rights and creates the legal prerequisites for the commercial use of the relevant technical solution," says Alina Parkhuta of the Law Firm "Logic".
In particular, the patent owner has the right to:
- independently use the patented object in business activities;
- prevent the unlawful use of the invention or utility model by other persons;
- grant other persons permission to use the development, in particular by entering into license agreements;
- transfer intellectual property rights to other persons in accordance with the procedure established by law;
- use the patent as an intangible asset in business activities;
- seek protection of infringed rights, including through the courts.
At the same time, the existence of a patent does not mean an unconditional right to use the development under any circumstances. The exercise of property rights must comply with legislative requirements, the scope of legal protection, and the intellectual property rights of other persons.
Common Mistakes When Registering an Invention or Utility Model
Lawyer Alina Parkhuta explains that even a promising technical development may encounter difficulties during patenting due to mistakes at the application-preparation stage or failure to comply with the established procedure.
Premature disclosure of information about the development. Publishing technical materials, presenting the development at an exhibition, or demonstrating it to potential partners before filing an application may negatively affect the assessment of its novelty. Therefore, before making information public, it is advisable to assess in advance the possibility of filing an application and, where necessary, provide for additional measures to protect confidential information.
Incorrect identification of the subject matter to be patented. A technical solution, the appearance of a product, and a commercial designation require different forms of legal protection. An incorrect choice of subject matter may result in the legal protection obtained failing to correspond to the actual interests of the developer or business.
Insufficient development of the claims of the invention or utility model. The claims determine the scope of legal protection. If they do not encompass the essential features of the technical solution or are worded incorrectly, the possibilities for practical protection afforded by the patent obtained may be substantially limited.
Uncertainty regarding ownership of property rights. If a development was created by several persons or by an employee within the framework of an employment relationship, it is necessary to determine in advance who owns the right to register it and subsequently dispose of the intellectual property rights. The mere fact that a development was created does not always mean that all rights to it belong directly to the author.
Failure to comply with procedural deadlines. Late payment of the prescribed fees, failure to submit the necessary documents, or failure to respond to examination requests within the specified period may delay the examination of the application or negatively affect the possibility of obtaining a patent.
"To minimize these risks, it is important, even before filing an application, to conduct a preliminary analysis of the development, determine ownership of the rights, properly prepare the documentation, and develop a patent protection strategy," the lawyer explains.
According to Alina Parkhuta, during the patenting process it is important to assess not only the prospects of obtaining a patent, but also the extent to which the chosen legal protection will correspond to the long-term goals of the business.
"Patent protection should not be viewed solely as a formal procedure for obtaining a protection document. First and foremost, it is a tool for managing a business's intellectual assets. Even before beginning the procedure, it is necessary to determine the specific practical purpose the patent is intended to serve: protecting one's own development from copying, commercializing it, attracting investment, transferring rights to partners, or entering international markets.
This determines not only the choice of the subject matter to be patented, but also the approach to drafting the claims, determining the scope of legal protection, and subsequently disposing of the property rights. That is why a patent strategy should take into account not only the possibility of obtaining a patent, but also how it will serve the owner's interests after the procedure is completed," notes Alina Parkhuta.
Patent protection is one of the key instruments for the legal protection of technical developments. It makes it possible to secure intellectual property rights and create opportunities for the commercial use of the results of intellectual activity.
At the same time, the effectiveness of patent protection depends not only on the fact that a patent has been obtained, but also on the proper identification of the subject matter, compliance with the patentability requirements, the quality of the application prepared, and the scope of the legal protection granted.
Therefore, patent protection should be viewed as a component of the business's overall intellectual property protection strategy. An early legal assessment of the development and professional support throughout the procedure make it possible not only to increase the chances of obtaining a patent, but also to ensure its practical value for the owner.