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Legislative Implementation of Flexibilities - Ukraine

Title:Section 16 of the Law on the Protection of Rights to Inventions and Utility Models No. 3687-XII of 15/12/1993 as last amended in 2003
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

Examination of Application

16.-(1) Examination of the application has the status of scientific and technical examination and consists of the preliminary examination, formal examination and, by the application for a patent for an invention (secret invention), qualifying examination. The examination shall be made by the examination institute according to this Law and regulations issued by the Office in compliance with this Law.

(2) The examination institute carries out information activity required for examination of applications and is the center for the international exchange of information communications according to the Convention on International Information Communication that was adopted on December 3, 1958, by the United Nation General Conference for Education, Science, and Culture.

(3) The final results of the examination of the application that is not considered withdrawn or was not withdrawn shall be presented in the grounded conclusion of examination, which shall be valid after its approving by the Office. Based on such a conclusion, the Office shall make a decision on the granting a patent or on refusing the patent. The applicant shall be notified on the Office decision.

The applicant shall have the right to require the copies of the materials, which were opposed to the application, within a month after receiving the Office decision. These copies shall be sent to the applicant within a month.

(4) The applicant shall have the right, on his own initiative or on the examination institute invitation, to participate personally or via his representative in discussion of the matters arising in the course of examination under the procedure specified by the Office.

(5) The applicant shall have the right to correct errors in the application, change his name and his address, address for service and name and address of his representative.

The applicant may make changes in the application that are connected with the change of the person of the applicant by the consent of all other applicants mentioned in the application. The person, who wishes to be the applicant, may also make these changes by the consent of all other applicants.

The said corrections and changes are taken into consideration, provided that the examination institute has received them not later than the document on the payment of the state fee for granting a patent had been received.

The said corrections and changes shall be taken into consideration while publishing the information on the application for granting a patent for an invention if the examination institute has received them within 6 months before the date of publication.

The filing of the request for correction of a mistake or making of any of the mentioned changes is subject to the payment of the respective fee, provided that a mistake is not obvious or technical, and the change is caused by reasons depended on the applicant.

(6) The examination institute may demand from the applicant to submit additional materials if the examination is impossible without these materials or if the examination institute reasonable doubts the veracity of the information or elements presented in the application documents.

The applicant shall have the right to request the copies of the materials, which were opposed to the application, within a month after receiving the examination institute notification or conclusion with the demand to submit the additional materials.

The applicant shall submit the additional materials within 2 months from the date of receiving the notification or conclusion of the examination institute or the copies of the materials, which were opposed the application. The period for submitting the additional materials may be extended, but for no more than 6 months, provided that the relevant request has been submitted and the fee has been paid before expiry of the said period. This period defaulted due to important reasons shall be renewed provided that the relevant request is submitted and the fee is paid within 6 months after the expiry of the period. If the applicant failed to submit the additional materials within the fixed period, the application shall be considered withdrawn, and the applicant shall be notified accordingly.

(7) If the applicant has submitted the additional materials, it shall be determined in the course of examination, whether these materials do not go beyond the subject-matter of an invention (utility model), disclosed in the application.

The additional materials shall go beyond the subject-matter of an invention (utility model) disclosed in the application if they contain features that should be included to invention (utility model) claims.

The additional materials in a part, that goes beyond the subject-matter of invention (utility model) disclosed in the application, shall not be taken into consideration in the course of the examination and may be presented by the applicant as an individual application after receiving the relevant notification of the examination institute.

(8) In the course of the preliminary examination, the application without the proposition of the applicant for referring an invention (utility model) to the state secret shall be examined for detecting information that may be referred to the state secret according to the Corpus of Data that constitute the state secret of Ukraine.

If such information is available in the application, and if the application contains the proposition of an applicant to refer an invention (utility model) to the state secret, the application documents shall be transferred to the relevant State Expert on Secret Matters (hereinafter - "the State Expert") for making the decision on referring an invention (utility model) to the state secret.

The State Expert shall submit his decision, together with the application documents, to the examination institute within a month from the date of receiving the application documents.

The period, within which the decision on referring an invention (utility model) to the state secret shall be valid, shall be determined by the State Expert in dependence on a degree of the information secrecy.

If the State Expert has made the decision to refer an invention (utility model) to the state secret, the State Expert shall determine the persons, who have the right to access it, and the following processing of the application shall be accomplished in the secret regime.

The examination institute shall immediately notify the applicant on the State Expert decision. If the application did not contain the proposition of an applicant to refer an invention (utility model) to the state secret, and the State Expert has referred an invention (utility model) to the state secret, the applicant, in case of disagreement, may submit to the examination institute a grounded request to declassify the application documents or appeal to the court against the State Expert decision.

(9) In the course of the formal examination:

the date of filing of the application shall be determined according to Article 13 of this Law;

it shall be determined whether the claimed object belongs to the technology objects specified in Paragraph 2 of Article 6 of this Law as well as to the technology objects specified in Paragraph 3 of Article 6 of this Law;

the application shall be examined for conformity with the formal requirements of Article 12 of this Law and the regulations issued by the Office in compliance with this Law;

the document on the payment of the respective fee for filing of the application shall be examined for conformity with established requirements.

(10) If the application materials meet the requirements of Article 13 of this Law and the document on the payment of the respective fee for filing of the application is presented, the applicant shall be notified on the determined date of filing of the application.

(11) If the application materials do not meet the requirements of Article 13 of this Law, the applicant shall be immediately notified. If the applicant removes the nonconformity within 2 months from the date of receiving the notification, the date on which the examination institute has received the corrected application materials shall be considered to be the date of filing of the application. Otherwise, the application shall be considered not filed, and the applicant shall be notified accordingly.

(12) If in the materials of the application, which meets the requirements of Article 13 of this Law, there is a reference to a drawing, but the drawing is not available in the application, the applicant shall be notified accordingly with the proposition to submit the drawing or to remove the relevant reference from the application. If an applicant submits the drawing within 2 months from the date of receiving the notification, the date of filing of an application shall be the date when the examination institute receives the drawing. If the applicant does not react to the proposition, the application shall be considered not filed, and the applicant shall be notified accordingly.

(13) If the requirements of Paragraph 11 of Article 12 of this Law are not met, the application shall be considered withdrawn, and the applicant shall be notified accordingly.

(14) If the claimed object belongs to the technology objects specified in Paragraph 2 of Article 6 of this Law and if the application materials meet the formal requirements of Article 12 of this Law and the regulations issued by the Office in compliance with this Law, and the document on the payment of the respective fee for filing of an application meets the specified requirements, the applicant shall receive:

with respect to a patent for an invention - a notification that the formal examination was competed and that it is possible to carry out the qualifying examination;

with respect to a declarative patent for an invention (utility model) - the decision of the Office for granting a declarative patent for an invention (utility model).

(15) If there are reasons to consider that the claimed object does not belong to the technology objects mentioned in Paragraph 2 of Article 6 of this Law, or if the application materials do not meet the formal requirements of Article 12 of this Law and the regulations issued by the Office in compliance with this Law, or the document on the payment of the respective fee for filing of the application does not meet the specified requirements, the examination institute shall send to the applicant the grounded preliminary conclusion with the proposition to present a grounded answer and to remedy, if necessary, the irregularities specified in the conclusion.

The applicant shall give the answer within the period fixed in Paragraph 6 of this Article, and this answer shall be taken into consideration when the conclusion of the examination on the application is being prepared.

If the requirement of unity of invention that is specified in Paragraph 4 of Article 12 of this Law is not fulfilled, the applicant shall indicate in the answer an invention (utility model), with respect to which the examination of the application should be carried out, and make clarifications in the application if necessary. With respect to other inventions (utility models) individual applications shall be filed.

If the requirement of unity of invention is not fulfilled on the proposition of the examination institute, the examination of the application shall be accomplished with respect to an invention (utility model) that is indicated as the first in its invention claims.

(16) After the expiry of 18 months from the date of filing of the application for granting a patent for an invention or, if the priority has been claimed, from its priority date, the Office shall publish in its official bulletin the defined data on the application, provided that the application was not withdrawn, is not considered withdrawn or the decision on the refusal of a patent was not made.

On the request of the applicant, the Office shall publish the data on the application before the expiry of the said period. The filing of the request is subject to the payment of the respective fee.

After publication of the information on the application, any person shall have the right to access to this data under the established procedure. The access to the application materials is subject to the payment of respective fee.

In the case of detecting obvious errors in the published data, the applicant shall have the right to file a request for correcting the errors.

Data on the application for granting a declarative patent for an invention (utility model) shall not be published.

Data on applications, for which the State Expert has taken the decision to refer them to the state secret, shall not be published.

(17) In the course of the qualifying examination a claimed invention shall be examined on the conformity with the patentability requirements defined by Article 7 of this Law.

The examination institute shall carry out the qualifying examination after the receipt of the relevant request of any person and the document on the payment of respective fee for the examination.

The applicant may file the said request and the document on the payment within 3 years from the date of filing of the application. Another person may file the said request and document after publication of the data on the application for an invention but not later than 3 years from the date of filing of the application. This person shall not make decisions with respect to the application, and shall only receive the conclusion of the examination on the application approved by the Office.

The period for filing of the said request and document shall be extended but for no more than 6 months provided that the relevant request has been filed and the fee for filing of the request has been paid before the expiry of this period. This period defaulted due to important reasons shall be renewed provided that the relevant request is filed and the fee is paid within 12 months after the expiry of this period. If the applicant fails to file the said request and document within the specified period, the application shall be considered withdrawn, and the applicant shall be notified accordingly.

(18) If there are reasons to consider that the claimed invention does not meet the patentability requirements, the examination institute shall send to the applicant the grounded preliminary conclusion with the proposition to give a motivated answer and, if necessary, to remedy the irregularities specified in the conclusion.

The applicant shall give the answer within the period determined in Paragraph 6 of this Article for additional materials, and this answer shall be taken into consideration when the conclusion of the examination on the application is being prepared. The matters on the fulfillment of the requirement of unity of invention shall be considered according to Paragraph 15 of this Article.

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