Registration of a patent for an invention

Patent for an Invention in Ukraine

A patent for an invention is a protection document confirming state registration of an invention and granting its owner proprietary rights within the scope defined by law.

A patent allows the owner to:

• use the invention;
• authorize its use by other persons;
• transfer proprietary rights;
• enter into license agreements;
• prohibit unauthorized use of the invention;
• protect rights in the event of infringement.

At the same time, it is important to distinguish between the inventor and the owner of proprietary rights: they are not always the same person.

The quality of patent protection depends not only on the technical solution itself, but also on how accurately the application is drafted, especially the patent claims.

What Can Be Patented as an Invention

An invention is the result of a person’s intellectual and creative activity in any field of technology.

Depending on the particular solution, an invention may include, in particular:

• a product;
• a device;
• a substance;
• a process or method;
• another technical solution that meets the requirements established by law.

Before filing, it is important to correctly determine the essence of the technical solution and which features should be included in the patent claims.

Patentability Requirements for an Invention

To obtain legal protection, an invention must meet three main criteria:

• novelty;
• inventive step;
• industrial applicability.

Novelty means that the relevant technical solution must not already be known from the prior art.

Inventive step means that the solution must not be obvious to a person skilled in the relevant field.

Industrial applicability means that the invention can be practically used.

These criteria are examined during substantive examination of the application.

Patent Search Before Registering an Invention

Before filing an application, it is advisable to conduct a patent search.

Its purpose is to identify the closest technical analogues and assess:

• whether the solution is novel;
• what prior art exists in the relevant field;
• which solutions have already been patented;
• which features may be genuinely distinctive;
• how the future patent claims should be structured.

A search does not guarantee that a patent will be granted, but it helps assess the prospects of the application before significant costs are incurred.

Why You Should Avoid Publishing an Invention Before Filing

Novelty is one of the key patentability requirements.

Therefore, before choosing a patent strategy, caution should be exercised regarding:

• social media publications;
• posting a technical description on a website;
• demonstrating the invention at exhibitions;
• scientific publications;
• sharing a detailed description with potential partners;
• commercial presentations without confidentiality protection.

Before negotiations with an investor, manufacturer, or partner, it may be advisable to use an NDA and obtain preliminary advice regarding the filing date.

Where to File an Invention Application in Ukraine

The old wording referring to filing documents with the state enterprise “Ukrpatent” is no longer current.

The functions of the National Intellectual Property Authority are performed by the Ukrainian National Office for Intellectual Property and Innovations — UANIPIO (IP Office).

Applications and state registration data relating to inventions and utility models are handled through the relevant UANIPIO systems.

Documents Required for an Invention Application

An invention application must be prepared in accordance with the special requirements of legislation and applicable rules.

The main materials include:

• an application;
• a description of the invention;
• patent claims;
• drawings or other materials — if referenced in the description;
• an abstract;
• other documents depending on the specific application.

The old list referring to a “model of the invention” or an application to include the invention in the customs register is not part of the standard patent application package.

Customs protection is a separate procedure that may be considered later in the context of enforcing registered rights.

Description of the Invention

The description must disclose the technical solution in sufficient detail for a person skilled in the relevant field to carry it out.

It may include:

• the technical field;
• prior art;
• the technical problem;
• the essence of the invention;
• the technical result;
• drawings;
• specific implementation examples.

Insufficient disclosure of the invention may create serious problems during examination.

Patent Claims

The patent claims are one of the most important elements of a patent application.

They define the set of technical features for which the applicant seeks legal protection.

The claims may contain:

• independent claims;
• dependent claims;
• product features;
• process features;
• interrelated technical solutions.

Claims that are too narrow may significantly limit the value of the patent.

Claims that are too broad may create problems with novelty, inventive step, or clarity.

Unity of Invention Requirement

One application should relate to:

• one invention;
• or a group of inventions linked by a single inventive concept.

Current UANIPIO methodological recommendations separately address the unity requirement during both formal and substantive examination.

Therefore, if a development contains several independent solutions, it is advisable before filing to determine whether they can be included in one application or should be divided.

Stages of Obtaining a Patent for an Invention

The procedure includes several main stages.

1. Initial analysis of the invention.
2. Patent search.
3. Preparation of application materials.
4. Filing the application with UANIPIO.
5. Formal examination.
6. Publication of application information.
7. Request for substantive examination.
8. Substantive examination.
9. Decision on state registration.
10. Payment of the required fees and state registration of the invention.

Formal Examination

At this stage, the formal requirements for the application are reviewed.

In particular:

• availability of the required documents;
• correct formatting;
• the unity requirement within the applicable scope;
• other formal procedural requirements.

Formal examination alone does not mean that the invention has already been recognized as novel or inventive.

Substantive Examination of an Invention

Substantive examination is the key stage for an invention.

During this stage, the claimed technical solution is assessed for compliance with patentability requirements.

The following are analyzed:

• novelty;
• inventive step;
• industrial applicability;
• the patent claims;
• relevant prior art;
• other statutory requirements.

During examination, the applicant may receive notices and preliminary conclusions that require timely and professional responses.

Term of Protection for an Invention Patent

The general term of proprietary intellectual property rights in an invention is 20 years from the filing date.

This term is also confirmed by current UANIPIO practice.

For certain categories of inventions, legislation may provide special mechanisms for additional protection.

To maintain the rights, the required annual fees must also be paid on time.

Inventor and Patent Owner

The inventor is the individual whose creative work resulted in the invention.

However, the applicant and owner of proprietary rights may be another person.

For example:

• an employer;
• a company;
• a successor in title;
• another person holding the relevant rights.

For businesses, it is particularly important to properly formalize rights to employee inventions and developments created by employees or contractors.

What Cannot Be Patented as an Invention

Not every new idea qualifies as an invention for patent purposes.

Patent protection as such is not used, in particular, for:

• discoveries;
• scientific theories;
• mathematical methods;
• certain results of artistic design;
• computer programs as such;
• forms of presenting information;
• other subject matter excluded from patent protection by law.

At the same time, a technical solution implemented using software is not always automatically excluded from patenting — its technical substance must be analyzed.

Invention Patent or Utility Model

These are different forms of protection for technical solutions.

The choice depends on the nature of the development and the business strategy.

International Patenting of an Invention

Patent rights are territorial.

A Ukrainian patent protects an invention in Ukraine but does not by itself create patent protection in the United States, the EU, Canada, Japan, or other countries.

For international protection, it is possible to use:

• separate national applications;
• regional patent systems;
• an international application under the PCT procedure.

The PCT allows one international application to preserve the possibility of later obtaining patent protection in a large number of countries.

However, it is important to understand that the PCT does not grant a single “world patent”.

After the international phase, the applicant enters the national or regional phases in the countries where patent protection is actually sought.

Priority and Filing Abroad

If the first application has already been filed in Ukraine, the international strategy should be planned with the priority period in mind.

Under the PCT, if the applicant wishes to claim priority from the first application, the international application generally needs to be filed within 12 months from the date of the first filing.

Therefore, international patenting should ideally be considered at the initial stage rather than several years later after the Ukrainian patent has been granted.

PCT or Direct Filing in Other Countries

The choice depends on:

• the number of countries;
• budget;
• target markets;
• countries of manufacture;
• plans regarding investors;
• the need to postpone significant costs associated with national procedures.

The PCT is often used when the applicant has not yet finalized the list of target markets.

What to Do If the USPTO, EPO, or Another Office Raises Questions

During international patenting, the applicant may receive:

• examination requests;
• novelty objections;
• inventive-step objections;
• requests to amend or clarify the claims;
• other procedural communications.

Responses must take into account the legislation and practice of the relevant jurisdiction, so local patent attorneys may need to be involved.

Stages of Legal Support for Patenting

1. Consultation. We analyze the technical solution and the client’s objectives.
2. Patent search. We identify the closest prior art.
3. Strategy. Invention, utility model, Ukraine, or international protection.
4. Application preparation. Description, claims, abstract, and drawings.
5. Filing. We support filing with UANIPIO.
6. Formal examination. We respond to procedural issues.
7. Substantive examination. We support the patentability assessment.
8. State registration. We monitor completion of the procedure.
9. International stage. If necessary, we prepare a PCT or another international strategy.

Cost of Patenting an Invention

The cost depends on:

• the complexity of the technical solution;
• the scope of the patent search;
• the number of independent claims;
• the volume of drawings and description;
• correspondence with the examining authority;
• the need to revise the application;
• government fees;
• the number of countries in which international protection is sought;
• the need to work with foreign patent attorneys.

Common Patenting Situations

Conclusion

Patenting an invention is not simply a matter of submitting a short description and receiving a protection document. It is necessary to review the prior art, correctly define the essence of the invention, establish the intended scope of future legal protection, and successfully complete substantive examination. For developments that are planned for commercialization abroad, the international strategy should be developed before completion of the Ukrainian procedure.

Do you have a new device, technology, method, or another technical solution and want to protect it from copying? Submit a request on the Prikhodko & Partners Law Firm website. We will conduct a patent search, assess the prospects of the invention, prepare the application, and support patenting in Ukraine or abroad.