Starting September 2017, the EU-Ukraine Association Agreement (the “Agreement”) entered into force. According to the Agreement, Ukraine, among other things, has taken certain obligations for IP, though it was not clear whether they should apply with an immediate effect or after conflicting Ukrainian laws are changed. Recently, the Patent office finally explained that the Agreement will be applied in full and prevail over the national legislation, including the most relevant changes as follows.
Inventions – new SPC rules
Calculation approach for obtaining supplementary protection certificate (the “SPC”) for medicinal and plant protection products has changed, leaving less chance to get such extension of patent protection.
Date of first marketing authorization – Date of filing the application = SPC (but not exceeding 5 years).
Date of first marketing authorization – Date of filing the application – 5 years = SPC.
Article 220 of the Agreement: “1. The Parties recognise that medicinal and plant protection products protected by a patent in their respective territory may be subject to an administrative authorisation procedure before being put on their market. They recognise that the period that elapses between the filing of the application for a patent and the first authorisation to place the product on their respective market, as defined for that purpose by the relevant legislation, may shorten the period of effective protection under the patent.
2. The Parties shall provide for a further period of protection for a medicinal or plant protection product which is protected by a patent and which has been subject to an administrative authorisation procedure, that period being equal to the period referred to in paragraph 1, reduced by a period of five years.”
Trademarks – non-use period increased
The term of trademark non-use giving grounds for cancellation action increased from 3 to 5 years.
Article 197 of the Agreement: “If, within five years of the date of completion of the registration procedure, the proprietor has not put a trademark to genuine use in connection with the goods or services in respect of which it is registered in the relevant territory, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be subject to the sanctions, unless there are proper reasons for non-use”.
Given the above, it makes sense for business to reconsider strategy for management of drug patents portfolios, as there will be less chance to get SPC. Trademark owners could be more relaxed while postponing use of its signs. On the other hand, it will take more time until competitor’s unused trademark becomes subject to cancellation action.