International Patenting

International patenting is important for companies seeking to protect their innovations and commercial interests in the global market. Beyond providing legal protection for intellectual property in different countries, it helps attract investment, fosters innovation, and strengthens business competitiveness.

Language of patent prosecution in USSR countries

• Protecting Intellectual Property Abroad
• National Patent in the Country of Interest
• EAPO Regional Patent (Eurasian Patent Organisation)
• EPO Regional Patent (European Patent Office)
• Patent Cooperation Treaty (PCT) procedure
• Patenting in Different Countries Worldwide

Protecting Intellectual Property Abroad

It is important to note that a patent granted in Ukraine provides patent protection only within Ukraine. The main reasons for seeking legal protection (patenting) abroad include:

• safeguarding industrial goods during export, equipment supply abroad, and the construction of enterprises based on Ukrainian documentation and technical support;
• ensuring the best conditions for selling licencing domestic inventions to foreign companies;
• establishing joint ventures abroad where intellectual property rights will be contributed by Ukrainian entities;
• engaging in scientific and technical cooperation with a foreign company, leading to independent and joint developments.

MSP will be pleased to offer you a full range of services for patenting inventions in any country or group of countries of your interest. We will handle the complete process of preparing, filing, and pursuing a patent application until the patent is granted.

Thus, if you decide to protect your economic interests not only in Ukraine but also abroad, we recommend obtaining a patent in the relevant countries or regions.

Please note that the protection of intellectual property rights abroad can be carried out either by filing national and/or regional applications with the patent office of each selected country/countries individually, or by filing an international application with subsequent entry into the national and/or regional phases of any country and/or region that has signed the Patent Cooperation Treaty, which simplifies the process and can be more cost-effective if protection is sought in several jurisdictions.

National Patent in the Country of Interest

Please note that in accordance with Article 37 of the Law of Ukraine No. 3687-XII dated December 15, 1993 “On Protection of Rights to Inventions and Utility Models” (hereinafter referred to as the Law), in order to file a direct national application in the selected country or countries, you must first file an application in Ukraine. Only after that, in order to maintain the conventional priority, no later than 12 months from the date of filing the Ukrainian application, in accordance with Article 15 of the Law, you shall file an application with the national office of the country in which you wish to obtain patent protection for your invention.

EAPO Regional Patent (Eurasian Patent Organisation)

Obtaining an EAPO patent is advisable if you wish to obtain patent protection in several CIS countries. A Eurasian patent provides legal protection for an invention in 8 countries of the former USSR: Azerbaijan, Belarus, Armenia, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan.

EPO Regional Patent (European Patent Office)

A European patent application is filed with the European Patent Office (EPO) in one of its official languages (English, French, or German), specifying the countries where patent protection is desired (list of EPO countries).

Upon publication, a European patent grants the same rights as a national patent in the selected countries. However, obtaining a European patent does not automatically make it valid across all European countries — national validation must be completed in each selected country within three months from the publication of the decision to grant the patent.

The validation process requires the appointment of national professional representatives in each of the selected countries and the translation of the application materials into the national language of the selected countries, as well as the payment of official validation fees. This procedure imposes a significant financial burden on the applicant. For example, validation in five countries with full translations entails can cost over EUR 5,000.

One should also pay attention to additional opportunities for saving money on translation of application materials, payment of foreign patent attorneys and national official fees, which became available under the London Agreement.

Thus, according to the said Agreement:

• filing a European application in English provides for automatic validation of a European patent in the United Kingdom, Belgium, Germany, France, Switzerland, Liechtenstein, Luxembourg and Monaco without the requirement to provide national translations and appoint local patent attorneys;
• to validate a European patent in the Netherlands, Sweden, Croatia, Denmark and Iceland, it is necessary to provide a translation of the claims only;
• Similarly, for validation in Latvia and Slovenia, only the claims need to be translated, regardless of the EPO filing language.

Patent Cooperation Treaty (PCT) Procedure

A Patent Cooperation Treaty (PCT) application can be filed either with the Ukrainian Patent Office and then forwarded to the World Intellectual Property Organisation (application with a priority claim) or directly with the World Intellectual Property Organisation.

It is important to understand that filing a PCT application does not grant a patent. A filed and accepted PCT application has the force of a filed application in each of the contracting states that have signed the Patent Cooperation Treaty (list of countries) and allows the applicant to avoid additional costs for preparing application materials for filing the same invention in different countries and/or regions.

Besides, one of the main advantages of filing a PCT application is the extension of the period during which the applicant may decide on the number of countries and/or regions in which the patent application will be filed to 31 months from the priority date (in case of filing a direct national or regional application, this period is 12 months from the priority date).

The PCT procedure also provides for an international search and the possibility of international preliminary examination, which allows the applicant to assess the feasibility of proceeding to the national and/or regional patenting stage before having to pay national fees, which constitute a significant part of the patenting costs.

Patents are granted by the national and/or regional patent offices of the selected countries and/or regions. Therefore, in order to obtain legal protection for your invention in specific selected countries and/or regions, PCT application documents are filed with the national and/or regional offices of these countries/regions (documents can be filed within 30-31 months from the priority date). After that, the selected office conducts an examination and makes a decision on granting or refusing to grant a patent. Read more about filing an international application.

MSP is pleased to assist you in obtaining patent protection (patenting) of your invention worldwide.

Our professionalism and many years of experience in filing both international and national applications in cooperation with patent attorneys in the CIS, Europe and other foreign countries allow us to successfully represent your interests outside Ukraine.

We guarantee the confidentiality of all information received during the application and patent maintenance processes.