UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
ed by the UA PTO. There are no separate reg- isters of patents in specific areas (eg, medicinal products) in Ukraine. A commercial secret owner has the right to use their commercial secret, and to prohibit or allow such use. 1.6 Further Protection After Lapse of the Maximum Term Since 16 August 2020, supplementary protec- tion certificates (SPCs) have been available in Ukraine. A holder of a patent for (i) an active pharma- ceutical ingredient of a medicinal product, the process for obtaining a medicinal product or application thereof; or (ii) an animal protec- tion product or plant protection product, which require marketing authorisation in Ukraine, has the right to extend the term of validity of the intellectual property rights (supplementary pro- tection), which is certified by the SPC. An SPC is issued at the request of a patent hold- er. There is a fee for submitting the application. The rights to supplementary protection shall be limited to products that received marketing authorisation in Ukraine under the Ukrainian law and their use as medicinal products, animal protection products or plant protection products within the scope of rights granted by a respec- tive patent on the day of applying for the SPC. Conditions to be complied with while applying for supplementary protection include that: • a patent holder may obtain supplementary protection if a request for marketing authori- sation in Ukraine was filed within one year as
from the date of submitting such a request for the first time in any country; • the term of supplementary protection shall be equal to the period between filing the patent application with the UA PTO and the date of receipt by the patent holder of the first market authorisation in Ukraine, reduced by five years – generally, the term of supplementary protection may not exceed five years; • for patents protecting the active pharmaceuti- cal ingredient of a medicinal product intended to be used by children, which is indicated in the market authorisation file, the term of sup- plementary protection is additionally extend- ed for another six months; and • the UA PTO must receive a request for sup- plementary protection within six months either as from the date of publication of information on issuing a patent or as from the date of the first market authorisation in Ukraine (whichever is later). Prior to 16 August 2020, right-holders could also obtain an extension of a patent in full, unlike an SPC that is limited to protection of a specific medicinal product. Due to the significant change made to the Patent Law on 16 August 2020, for several years there was a lacuna in the law because the holders of patents obtained long before the above date have, in fact, lost the right to obtain SPCs for their inventions. Resolving one of the cases, the Supreme Court restored the right to obtain an SPC for one of the pharmaceutical companies, taking into account the provisions of the UA-EU Association Agreement and the rule of law prin- ciple. However, the respective changes into the legislation are still required for this issue to be resolved for all the patent holders who gained their right to an SPC before the changes to the Patent Law on 16 August 2020.
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