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IP Deadlines under Martial Law in Ukraine

Slobodan Petosevic

Until early April 2022 it was not clear exactly how IP deadlines would be affected by the martial law in Ukraine. The martial law, which was first introduced in Ukraine on February 24, 2022, has been extended several times and remains effective as of the writing of this article.

The Ukrainian Intellectual Property Office (“IPO”) published several notices in March, 2022, informing the IP community that the IPO continues to operate on a full-time basis to ensure uninterrupted functioning of the intellectual property system, and also explaining that the earlier-published letter of the Ukraine Chamber of Commerce and Industry, which certified the events of force majeure, could be interpreted as applicable only to applicants and IP rights holders residing or domiciled in Ukraine. The IPO did not have the discretion to prescribe deadline-related procedural issues, which would have required adoption of a special law.

This uncertainty was finally resolved on April 1, 2022, with the adoption of the law “On the Protection of Rights of Intellectual Property Subjects during Martial Law in Connection with Military Aggression of the Russian Federation Against Ukraine” No. 2174-IX (the “Law”). This Law, which entered into force on April 13, 2022, provides for:

1) Suspension of deadlines relating to protection and acquisition of IP rights to trademarks, inventions, utility models, industrial designs, semiconductor topography rights, geographical indications, copyrights, and plant varieties for the duration of the martial law period, starting on February 24, 2022. In addition to general prosecution and IP rights maintenance deadlines provided by relevant IP laws, the suspension also affects the deadlines for:

• filing oppositions against national trademark applications and international registrations under the Madrid Agreement and Protocol;
• challenging decisions of the Ukrainian IPO before courts;
• filing appeals before the IPO Board of Appeals;
• filing patent invalidation actions;
• filing requests for reinstatement of missed deadlines, etc.

According to the Law, these deadlines will continue as of the day following the date on which the martial law regime stops or is lifted, taking into account the time that passed before February 24, 2022.

2) Continuation of validity of IP rights for which the relevant deadlines were suspended. The respective patents and certificates remain valid and fully enforceable.

3) Possibility to subsequently pay the renewal and annuity fees falling due within the martial law period, within 90 days after the martial law regime is lifted.

4) Possibility for applicants/IP rights holders to take necessary actions, i.e. file relevant applications, requests, objections, or responses, not later than 90 days following the day on which the martial law regime is lifted, without paying any extension or reinstatement fees.

In spite of the above-mentioned provisions of the Law, IP rights holders and applicants are not explicitly exempt from the duty to perform all required actions aimed at securing and protection of IP rights.

The primary purpose of the Law is to establish additional protective mechanisms that can be used as a “safety blanket” by IP rights holders and applicants in case they cannot comply with deadlines due to unforeseen circumstances caused by the war, or when certain actions become complicated or impossible.

Obviously, some actions may require extensive research and investigation, collection and securing of evidence, negotiating and/or formalising agreements, etc., which are often significantly jeopardised by the unpredictability of war. Also, there are a number of troublesome circumstances that IP rights holders and applicants, particularly those residing or domiciled in Ukraine, or those whose legal representatives are in zones of military conflict, can face under the martial law. For this particular reason, and understanding the importance of IP rights for future economic recovery and growth, the legislature quickly responded to legislative initiatives aimed at preserving IP deadlines and adopted relevant protective mechanisms preventing the possible loss of IP rights and damages from such loss of rights in this difficult time.

Still, given that the Ukrainian IPO operates on a full-time basis, and given that the e-filing system is fully functional, IP rights holders and applicants, particularly non-residents, are advised to follow the “normal” course of action in Ukraine, relying on the Law only in exceptional cases.

There are several reasons for this:

• As noted, the Law is a “safety blanket” mechanism for the prevention of possible loss of rights and a formalised ground justifying reinstatement of missed deadlines. In its previous notices, the IPO had sent a clear message that the system is fully operational, hence there are no reasons for not meeting due deadlines, unless there are serious obstacles that prevent the applicant from performing the required actions;
• Given the above-mentioned provisions of the Law, there will be only a relatively narrow window during which IP rights holders will have to perform all actions that fell due within the period of the martial law. It is not difficult to imagine that this may result in a significant backlog in the IPO once the martial law is lifted and possibly create problematic situations;
• The potential backlog problem is coupled with procedural issues, particularly the need to correctly calculate relevant IP deadlines on a case-by-case basis, depending on whether the respective countdown date fell before the introduction of the martial law or during the martial law period, while still complying with the provisions of relevant guidelines regulating the procedures of reinstatement. The IPO has not issued its recommendations yet.

Good planning and portfolio management under these difficult circumstances is key to avoiding possible future complications and delays with resumption of IP rights prosecution and maintenance, and founding a solid base for the protection and enforcement of IP rights in the post-war economy that will strive for innovation and growth.