Transfer of IP rights in Ukraine

  1. Patents: Assignment
    1. 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 
    2. 2. Which formalities must be met to record a patent assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the patent assignment? Does the record in the patent register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the patent is held by more than one proprietor? 
    5. 5. Is there a need to appoint a domestic professional representative?
    6. 6. Which official fees (if any) arise from recording a patent assignment?
  2. Patents: Licensing
    1. 7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 
    2. 8. Which formalities must be met to record a patent licence? Which supporting documents are required?
    3. 9. What are the legal consequences of not recording the patent licence? Does the recording the patent register have declarative or constitutive effect?
    4. 10. Is there a need to appoint a domestic professional representative?
    5. 11. Which official fees (if any) arise from recording a patent licence?
  3. Patents: Pledge
    1. 12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?
  4. Trademarks: Assignment
    1. 1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 
    2. 2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the trademark assignment? Does the record in the trademark register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the trademark is held by more than one proprietor? 
    5. 5. Are there specific formalities in case a trademark is only partially assigned? 
    6. 6. Is there a need to appoint a domestic professional representative?
    7. 7. Which official fees (if any) arise from recording a trademark assignment?
  5. Trademark: Licensing
    1. 8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 
    2. 9. Which formalities must be met to record a trademark licence? Which supporting documents are required?
    3. 10. What are the legal consequences of not recording the trademark licence? Does the record in the trademark register have declarative or constitutive effect? 
    4. 11. Are there specific formalities in case a trademark is only partially licenced? 
    5. 12. Is there a need to appoint a domestic professional representative?
    6. 13. Which official fees (if any) arise from recording a trademark licence?
  6. Trademark: Pledge
    1. 14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Patents: Assignment

1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

A patent can be assigned by transaction (assignment agreement) or by law (succession, execution).

Recording the change of ownership in a registry is obligatory for the transfer to become effective.

2. Which formalities must be met to record a patent assignment? Which supporting documents are required?

If the rights are transferred under an agreement, either party to the agreement (a representative) has the right to submit an application to record the change of ownership in a registry.

If the rights are transferred based on law, the new owner must submit a motion to change the ownership registration.

2.1 Are original supporting documents essential or are copies sufficient?

The original supporting documents are required by legislation.

2.2 Are there any legalization and/or notarization and/or translation requirements?

If the supporting document submitted is an extract from the agreement, it must be notarized. PoAs as well as documents translated into Ukrainian must also be notarized and/or apostilled. A translation into Ukrainian is mandatory.

2.3 Is there a must to use a specific form?

If the transfer is based on an agreement, the application must be submitted in an approved form. If the transfer is based on law, there is no specific form for the motion; however, it must include specific information provided for by respective regulations.

If a patent for a secret invention or secret useful model is being transferred such a transfer will be agreed upon by the State Expert.

The agreement remains valid; however, the transfer of rights to the patent are not effective. 

The record in the patent register has a constitutive effect.

4. Are there specific formalities in case the patent is held by more than one proprietor? 

If a patent is held by more than one proprietor:

  1. a co-owner cannot sell his/her share of the patent without the consent of the other co-owners (unless otherwise provided by the contract regulating relations between co-owners); 
  2. all actions related to patent assignment must be regulated by an agreement concluded between the co-owners;
  3. the application can only be submitted by the co-owners (representatives); the co-owners may authorise one of the co-owners to act solely on their behalf.

5. Is there a need to appoint a domestic professional representative?

Foreign individuals and legal entities must exercise their rights through an intellectual property representative (patent attorney) duly registered in Ukraine. 

6. Which official fees (if any) arise from recording a patent assignment?

UAH 2,400 (approximately EUR 83) – if the transfer is based on an agreement.
UAH 1,600 (approximately EUR 55) – if the transfer is based on law.

Patents: Licensing

7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 

Patents can be licensed under exclusive and non-exclusive licences, or under single licences. 

Registration of patent licences is generally not required. However, before issuing a patent sublicence (if permission is granted by the patent’s owner), the holder of an exclusive patent licence must register it first. 

Only exclusive and non-exclusive licences can be registered.

8. Which formalities must be met to record a patent licence? Which supporting documents are required?

Either party to an agreement (a representative) has the right to submit an application to record the information about a patent licensing agreement.

8.1 Are original supporting documents essential or are copies sufficient?

The original supporting documents are required by legislation.

8.2 Are there any legalization and/or notarization and/or translation requirements?

If the supporting document being submitted is an extract from the agreement, it must be notarized. PoAs as well as documents translated into Ukrainian must also be notarized and/or apostilled. A translation into Ukrainian is mandatory.

8.3 Is there a must to use a specific form?

There is an approved form.

If a patent for a secret invention or secret useful model is being licensed, it will be agreed upon by the State Expert.

There are no legal consequences of not recording a nonexclusive patent licence. However, if a sublicence is issued under an unregistered exclusive licence, the sublicence will be invalid. 

Under the general rule, the record in a patent register is declarative.

10. Is there a need to appoint a domestic professional representative?

Foreign individuals and legal entities must exercise their rights through an intellectual property representative (patent attorney) duly registered in Ukraine.

11. Which official fees (if any) arise from recording a patent licence?

UAH 2,400 (approximately EUR 83) per application.

Patents: Pledge

12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?

Rights to patents can be pledged; however, there is no specific regulation and thus no registration is required.

Trademarks: Assignment

1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 

A trademark can be assigned by transaction (assignment agreement) or by law (succession, execution).

Recording the change of ownership in the registry is obligatory for the transfer to become effective. 

2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?

If the rights are transferred under an agreement, either party to the agreement (a representative) has the right to submit an application to publish the information regarding the transfer in the national IP bulletin when the change of ownership is recorded in the registry.

If the rights are transferred under law, the new owner must submit a motion for change of ownership registration.

2.1 Are original supporting documents essential or are copies sufficient? 

The original supporting documents are required by legislation; however, the patent agency accepts notarized copies as well.

2.2 Are there any legalization and/or notarization and/or translation requirements?

If the supporting document being submitted is an extract from the agreement, it must be notarized. PoAs as well as documents translated into Ukrainian must also be notarized and/or apostilled. A translation into Ukrainian is mandatory.

2.3 Is there a must to use a specific form?

If the transfer is based on an agreement, the application must be submitted in an approved form. If the transfer is based on law, there is no specific form for the motion; however, it must include specific information listed in the regulation.

If the trademark agreement is not recorded, the transfer of the rights to the trademark under the agreement is not effective. 

The record in the trademark register has a constitutive effect.

4. Are there specific formalities in case the trademark is held by more than one proprietor? 

If a trademark is held by more than one proprietor:

  1. a co-owner cannot sell his/her share of the trademark without the consent of the other co-owners (unless otherwise provided for by a contract regulating relations between co-owners);
  2. all actions related to the trademark assignment must be regulated by an agreement concluded between the co-owners;
  3. the application can only be submitted by the co-owners (representatives); the co-owners may authorise one of the co-owners to act solely on their behalf.

5. Are there specific formalities in case a trademark is only partially assigned? 

In such a scenario, a general procedure is applied, except that the patent agency will also issue, on payment of a fee, a new certificate in the name of the person to whom this right is transferred.

A territorial division of the trademark or a division and separate transfer of individual trademark components (e.g. word and figurative components) is not permitted.

6. Is there a need to appoint a domestic professional representative?

Foreign individuals and legal entities must exercise their rights through an intellectual property representative (patent attorney) duly registered in Ukraine.

7. Which official fees (if any) arise from recording a trademark assignment?

  • UAH 2,400 (approximately EUR 83) – if the transfer is ¬¬¬¬an agreement.
  • UAH 1,600 (approximately EUR 55) – if the transfer is based on law.
  • UAH 85 (approximately EUR 3) – for issuing a new certificate (for residents)
  • USD 200 – for issuing a new certificate (for non-residents).

Trademark: Licensing

8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 

Trademarks can be licensed under both exclusive and non-exclusive licences, or under single licences. Registration of trademark licences is not required. Only exclusive and non-exclusive licences can be registered.

Before issuing a trademark sublicence (if the trademark owner grants permission), the holder of an exclusive trademark licence must register it first. 

9. Which formalities must be met to record a trademark licence? Which supporting documents are required?

Either party to an agreement (a representative) has the right to submit an application to record the information about the trademarks’ licensing agreement. 

9.1 Are original supporting documents essential or are copies sufficient? 

The original supporting documents are required by legislation.

9.2 Are there any legalization and/or notarization and/or translation requirements?

If the supporting document being submitted is an extract from the agreement, it must be notarized. PoAs as well as documents translated into Ukrainian must also be notarized and/or apostilled. A translation into Ukrainian is mandatory.

9.3 Is there a must to use a specific form?

There is an approved form.

There are no legal consequences for not recording a nonexclusive trademark licence. However, if a sublicence is issued under an unregistered exclusive licence, the sublicence is invalid. 

Under the general rule, the record in the trademark register is declarative.

11. Are there specific formalities in case a trademark is only partially licenced? 

The licence can be partially issued both in terms of goods and services covered by the trademark’s protection, and territory covered by the licence. If a specific territory is not clearly defined in the agreement, it is assumed that the licence covers the territory of Ukraine.

No other specific formalities are provided for.

12. Is there a need to appoint a domestic professional representative?

Foreign individuals and legal entities must exercise their rights through an intellectual property representative (patent attorney) duly registered in Ukraine.

13. Which official fees (if any) arise from recording a trademark licence?

UAH 2,400 (approximately EUR 83) per application.

Trademark: Pledge

14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Rights to trademarks can be pledged; however, there is no specific regulation and thus no registration is required.

Maria-Orlyk-CMS-UA
Maria Orlyk
Partner
Kyiv (CMS RRH)
Diana-Valyeyeva-CMS-UKR
Diana Valyeyeva
Associate
Kyiv (CMS RRH)