Interview with Taras Manolov on Ukrainian patent law and practicing in Kyiv

Taras Manolov is a Ukrainian patent attorney from Kyiv is among the few hailing from Ukraine who are featured in the IAM Patent 1000 list. Prior to joining PETO?EVI? in 2020, Taras worked as a patent expert at Gorodissky and Partners in Kyiv for nine years. Previously, his career in research and academia focused on bacterial pathogenicity, environmental biotechnology and bacterial biosensors, and spanned 13 years. During this time, Taras worked as a researcher at the Max Planck Institute for Infection Biology in Berlin and at Lund University in Sweden, and as an engineer at the National Academy of Sciences of Ukraine. Taras also worked as a patent liaison for Ukrainian pharmaceutical company Yuria-Pharm.

Jean-Claude Alexandre Ho: Can you still continue your work as a patent attorney under these conditions??

Taras Manolov: Yes. As long as there is no fighting in the close vicinity, and basic necessities of life are present (including internet connection). Although it’s hard emotionally, knowing that in this very moment there are people in my country possibly dying because of being shot at, bombed, shelled, or trapped under collapsed buildings.

Jean-Claude: What are the origins of the Ukrainian patent law?

Taras: The origins of Ukrainian patent law go back to the USSR. Up to the year 1991 individuals could obtain patents only in exceptional cases, only when inventions were?not?created in connection of inventor’s work on state, cooperative or public enterprise,?and?without their funding, which was rather unusual in those times: private enterprises where not allowed. Usually inventions in USSR were awarded so called certificates of authorship, which gave right to a modest compensation, while exclusive rights rested with the state. Just before its collapse, the USSR adopted a Patent law which did not mention certificates of authorship any longer, getting closer to the Western concept of patenting. After regaining its independence, Ukraine first of all recognized patents and authorship certificates of USSR in year 1992, and soon followed it by adopting its own Patent law in 1993, which, after several amendments, is still in force.

Jean-Claude: If I am not mistaken, Ukraine was among the founding members of the Eurasian Patent Organisation. May I assume that Ukraine never ratified the respective treaty because of the outbreak of the war in 2014?

Taras: Actually, this project received negative reaction even earlier than that. Year 2011, the Prime Minister of the most pro-Russian government in Ukraine’s history tried to secure ratification of this treaty, but the state IP protection system put up resistance. The Education Ministry, which had the IP office in its structure, together with the IPO (named State Intellectual Property Service at that time) drafted a letter to the Government, disagreeing with ratification of the Eurasian Patent Convention. They argued that the ratification of the Eurasian Patent Convention will lead to loss of around 50% of all official fees, will make it impossible to achieve the status of International Searching Authority, and severely undermine the institute of Ukrainian Patent Attorneys. The letter also cited that strategically Ukraine’s direction is towards integration with the Europe, while Eurasian Patent Convention is not fully consistent with the European one. This position didn’t change since then. The outbreak of war in 2014 didn’t help, obviously.

Jean-Claude: What is the current status of Ukraine with regards to the EPO?

Taras: As far as I know, there are no official talks about joining the EPO at the moment, or at least such negotiations, if ongoing, are not public. I am sure most of Ukrainian patent practitioners would welcome such move. Our IPO although might not be that forthcoming with drive towards Europe in the patent domain, despite proclaimed strategic aim of integration with the European Union, because, obviously, they would have to limit their authority in certain areas, for example, they might have to abolish their status as PCT International Searching Authority and International Preliminary Examining Authority, losing a lot of prestige.

Jean-Claude: The last reform of the Ukrainian patent law dates of 2020 and is said to have aimed at harmonization with European law. After two years, what is your take on the reform??

'[...]harmonized certain provisions of Ukrainian patent law with the European norms [...]'

Taras: While the reform harmonized certain provisions of Ukrainian patent law with the European norms, the lawmakers took the opportunity and combined it with considerable limitation of patent protection. For example, while excluding treatment methods from the patentable subject matter, nothing was done to enable protection of first and second medical uses; the use type of claims was abolished altogether. Harsh constraints were put on the scope of claim amendments: now it is only possible to operate with the features already present in a set of claims, nothing can be taken from specification. Allowable subject matter for utility models, which used to be quite a popular type of IP right in Ukraine, was limited only to devices and methods. Besides limiting protection, this Patent law reform was not promptly followed by modification of by-laws, which still causes procedural disruptions.

Jean-Claude: Prior to the invasion, how was the situation of the patent profession in Ukraine? How many patent attorneys were active, which were the most important law firms, what were the main activities?

'108 [...] is the number of active Patent Attorneys in Ukraine'

Taras: Patent Attorneys in Ukraine started being examined and certified year 1994. As of now, certification of new patent attorneys is on hold for several years already. The last batch of patent practitioners got their Patent Attorney certificates in the beginning of year 2017, and after that there were no certification exams held up to this moment. The total number of Patent Attorneys in our register is 514, but only 108 of them provided updated details last year, so it is safe to assume that this is the number of active Patent Attorneys in Ukraine. Inevitably, some of the pioneers are no longer with us; a few remained in the territories occupied in 2014, and some probably changed their carriers. On the other hand, there are many patent professionals well prepared to take the exam, as soon as they will be held again.

To give you an idea which firms or individual Patent Attorneys are most active in the patenting in Ukraine, I analyzed the patents that entered into force during 2021. Of all the 2299 patents issued that year, 1507 were represented by Patent Attorneys. For around 68% of those, i.e. 1022 patents, prosecution was handled by 10 firms or attorneys; for example, 333 – by Gorodissky&Partners, 110 – Euromarkpat, and 109 – by Slobodyanuk & Partners. Other notable patenting firms that year were MSP, Illia Shlyakhovetsky, Pakharenko & Partners, Krylova & Partners, and Doubinsky & Osharova.

Jean-Claude: Thank you so much for giving this interview under the current circumstances, Taras. All the best for you!