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Worldwide IP protection

Have a global plan? Great, we know all possible ways to make it real!

We believe that Ukraine is an excellent opportunity for investment right now: think few steps ahead and book your priority date!

Priority date is the date of first filing of your IP object in any country: first filing of your trademark, design application, or your application for the invention. You can choose where to start and build a unique road map for your IP assets.

You have an opportunity to claim priority rights:

  • Within 6 months from filing date for trademarks and designs
  • within 12 months for patent application

Filing an application an any country within priority period, you save the filing date and the priority during expertise. After first filing, you have multiple ways for protection of your rights worldwide: locally in any country

The EUIPO is the European Union Intellectual Property Office responsible for managing the EU trade mark and the registered Community design. You have possibility to register a trade mark or a design locally in one EU Member State or apply via the European route in the EUIPO. Filing an application to EUIPO, you can get one registration, covering all 27 member states by one registration:

Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden

EU trade marks and design give protection in all member States of the Union.

Easy way to expand your protection regionally for EU at a reasonable cost, comparing with several separate registration in Member States.

Approximate еterms of smooth registration are about 6-8 months.  Fast Track process is available.

We are glad to assist you and to choose the best cost-effective route for your registration.

For the inventions, it is possible to file an application to the European Patent Office (EPO). The European Patent Office (EPO) examines European patent applications, enabling inventors, researchers and companies from around the world to obtain protection for their inventions in up to 44 countries through a centralized and uniform procedure that requires just one application. Application can be filed in one of three official languages – English, French and German. Currently, member states and validation states can be found on the Official EPO website.

This opportunity is the most efficient way for the inventions protections in the European countries.

We can help with the drafting and filing the patent application, and with preparing a strategy for the responses to Extended European Search Reports of EPO and all EPO communication as well.

We are happy to offer the up-to-date services and provide you with the newest information about the Unified Patent Court (UPC). The UPC is a Court, comprising judges from all participating Member States of the European Union. It is set up to decide in particular on the infringement and validity of both Unitary Patents and classic European Patents. The UPC is a Court common to currently seventeen EU Member States for which the Agreement on a Unified Patent Court (UPCA) will enter into force on 1 June 2023.

We can assist with Opt-out option: if you file an Application to opt-out, the UPC will have no jurisdiction over the opted-out European patent application, European patent or supplementary protection certificate pertaining to a European patent. More information can be found on the official UPC web-site

International application using Madrid System

Having basic trademark application or registration in one country (usually your country of residence), you have opportunity to file one international application for a trademark, covering up to 130 countries which are the parties of a Madrid Union, and paying one set of international fees.   The Madrid System is a cost-effective one-stop solution for trademark holders to obtain and maintain protection in multiple markets. Member of the Madrid System can be found here.

Once your trademark is registered, you can manage your registration, and easily expand protection into new markets. This system is recommended for the applicants who are interested in several jurisdictions and want to expand the protection as soon as their businesses grow internationally.

We are happy to provide you with the details of the efficient managing your international brand.

Provisional refusal in Ukraine

When the Ukraine is one of the designating parties in the international application, it is examined by Ukrainian Ip Office similarly as the national trademark application. In case, if the preliminary refusal has been issued by Ukrainian IP Office, it is necessary to choose a local (Ukarinian) trademark attorney to represent the applicant and to submit the Response and necessary documents.

The deadline to respond to the provisional refusal in Ukraine is 3 months from the date of issue. This period is extendable by paying official fee.

We offer the free advice for each Provisional refusal and are ready to assist with the best strategy in Ukraine.

International filing

Once you have an application for the invention or utility model, you can expand your protection internationally. To protect your invention in several countries, you can choose Paris route or PCT route.

Choosing the Paris route, you can file separate applications in preferred countries claiming a Paris convention priority within 12 months from the date of first filing.

PCT route – using the The Patent Cooperation Treaty (PCT)  – a great instrument of international protection for the inventions and utility models. More than 155 countries are contracting states of the PCT 

According to the WIPO official website, the comparison of these different route is following:

Source: https://www.wipo.int/export/sites/www/pct/en/images/paris_pct.gif

Ukraine  –  Entering PCT National phase in Ukraine

Ukraine is a Contracting State of PCT System: the deadline for PCT national phase entry in Ukraine is 31 months from the priority date.

It is necessary to provide Ukrainian translation of the application together with filing or within 2 months.

A request for a Substantive examination should be filed within 3 years from the international filing day.

We have a significant experience of entering PCT applications in national phase in Ukraine and will be glad to assist you.

Since February, 2020, the UK is not a member of the EU, therefore is a separate jurisdiction, worth attention for registering your IP objects. We have an experience in communication with UK I.P.O. and help you with following services:

  • filing trade mark application
  • monitoring similar trade marks
  • opposing similar trade marks
  • filing a counterstatement to the opposition/ revocation action to protect your trademark
  • preparing and submitting witness statements and evidence of use
  • assignments, license agreements for trade marks, designs, inventions
  • filing an application for invention
  • preparing a response to the Examination Report
  • renewals

Preferred Agents

Being a member of the main International Associations of Intellectual property and attending professional meetings regularly, we have an established cooperation with the preferred associates worldwide. We can help with the IP matters in any country under your request. Think globally, few steps ahead!

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