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Ukraine is an EU candidate: Can we soon file patent applications for Ukraine at the European Patent Office?
Author: Julia Semeniy
Source: Heuking Kühn Lüer Wojtek

The European Council granted Ukraine EU candidate status on June 23, 2022. Does this mean that patents granted by the European Patent Office will soon be valid in Ukraine? Not immediately, because for one thing, candidate status does not create any legal rights or obligations. Moreover, the European Patent Organization (EPO) is a supranational organization independent of the European Union (EU). On the way to membership, however, the EU is demanding numerous adjustments from Ukraine, including in patent law. Thus, 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 entry into the EPO? Membership in the EPO is not a direct requirement for EU accession. However, there is no member state of the European Union that is not also a member of the EPO. Therefore, there is a presumption that it will be no different for Ukraine. This is also supported by the approximation to the regulations of the European Patent Convention introduced in Ukraine in 2020. For example, the previously non-existent possibility of an opposition against 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, before being granted EU candidate status, all states had concluded an extension or, in the case of Moldova, a validation agreement with the EPO, and on average almost ten years earlier. In the case of Ukraine, it was different: it was granted 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 make up for this in the foreseeable future and conclude a validation agreement.

Patents must still be filed in Ukraine for the time being

Between the conclusion of the negotiations and the entry into force of the validation agreement, an average of a good two and a half years will pass[1], during which the provisions from the validation agreement will be transposed into national law. Only patent applications filed after the effective date of the validation agreement can be validated in the contracting state. At least, this is how it was regulated in all previous extension and validation agreements. For applicants, this means that for the foreseeable future they must continue to file patent applications that are to take effect in Ukraine with the competent office in Ukraine (currently UkrNOIPI), or initially as a PCT application with a later Ukrainian national phase.

Filing applications with the EPO delayed

However, once the negotiations on the validation agreement are completed and the date for its entry into force is approaching, applicants may consider whether it makes sense for them to delay filing the application and file it with the EPO, after the validation agreement has entered into force. Then there is the possibility to validate the European patent after grant for Ukraine without filing a separate national application or initiating a Ukrainian national phase.

This newsletter is largely based on information provided by our Ukrainian colleague Julia Semeniy (julia.semeniy@asterslaw.com). She is a Ukrainian patent attorney and attorney-at-law of the Asters law firm, with which we have been cooperating for many years. Mr. Kolja Lagemann, engineer and law student at Bucerius Law School, also contributed to this article during his internship in summer 2022. 

Newsletter in German is available at Heuking Kühn Lüer Wojtek's website https://bit.ly/3VBdYsW

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