Mikhailyuk, Sorokolat & Partners

Patent and Trademark Attorneys

Patent coverage in ex-USSR countries

Each country with its own legal system stipulates the procedure of the intellectual property objects protection. The definition of “worldwide patent” does not exist. Thus, in order to obtain protection of rights in different countries, it is required to examine the laws of a country of interest thoroughly.

Patent in the former USSR countries covered the jurisdictions of its 15 members. After the Soviet Union collapsed the states that used to be the part of the Union divided into so called three jurisdictions. Those of the first group of countries is now the part of the European Patent Convention, the second one operates under the Eurasian Patent Convention, while other remaining countries are currently not the members of either European or Eurasian patent systems. Such countries are Ukraine, Uzbekistan and Georgia. Nevertheless, even that these states do not operate under the above-mentioned systems, they still include important jurisdictions with a vast territory and population.

Language of patent prosecution in ex-USSR countries

Firstly, what has to be highlighted is the language of the countries that do not operate under the Eurasian Patent Convention or the European Patent Convention. The point is that in Uzbekistan, where the national language is Uzbek, people basically tend to use Russian in everyday life. Whereas the Ukrainians speak half Ukrainian, half Russian. And only people in Georgia use the mother tongue.

The conclusion to be derived from this is that the foreigners that want to file an application in these countries require help of the corresponding patent attorneys, who, by the way, must speak the national language. The workflow including documents required to be submitted as well as those to be received from the patent offices is carried out in the national language. Thus, it makes sense to enquire with the professional patent attorneys and make communication with patent office much easier.

Patent translation services

Professional translation into a target language is the obligatory step for filing a patent application with a foreign Patent Office. This action is by far one of the most crucial and cost-demanding.

The patent translation can be done either by a translation agency or a qualified team of a local IP law firm. However, when choosing the most appropriate way to carry out the patent application translation one should take into account that translators of an IP law firm are narrowly specialized in the primary art field. Most of the translation agencies do not have professionals with required technological background for better understanding of a patent application subject matter. Additionally the problem is in the language patterns and templates that have to be used while drafting a patent application.

Thus, the set of claims will be translated in a proper manner taking into account specific terminology and language. Proper patent translation is important as it defines the scope of patent protection and the results of patentability examination. Otherwise, the patent translation of bad quality may lead to several office actions arising at the stage of the substantive examination. The issue is that the responses to such office actions are both cost and time-demanding. Moreover, in certain cases improper patent translation may lead to court hearings coming from a misrepresentation of a subject matter of an invention, or even to impossibility to obtain a patent protection.

The team of our law firm carries out professional patent translations from and into Georgian, Ukrainian and Uzbek. At every step we guarantee high quality work standards that lead to the result in the most time and cost-efficient way.

National Patent Procedures

As far as Georgia, Ukraine and Uzbekistan do not operate under the Eurasian Patent Convention or the European Patent Convention, in order to obtain legal protection in these countries it is required to file a national patent application. The list of documents to be submitted for a patent application is almost similar for the mentioned countries.

In order to file a patent application a foreign applicant has to provide filing instructions to the local representative comprising applicant's and inventor's names, addresses and citizenships, a filing number and a date of priority application or a PCT application and a Power of Attorney. What is important is that foreign applicants must be represented before the Office by patent attorneys registered in the corresponding countries.

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Our law firm has branches in Georgia, Ukraine and Uzbekistan. We offer the full range of legal services related to the patent registration including patent search, patent translation, filing and further prosecution of an application, patent maintenance, preparing and recordal of assignment and license agreements as well as representing applicants before courts. If you need further information concerning patent registration or quotation for filing and prosecuting a patent application please feel free to contact us.