Forging a Future for Ukrainian IP: An Interview with Olena Orliuk

Olena Orliu, UANIPIO (Ukraine)

Despite having to work through wartime, the newly established Ukrainian National Office of Intellectual Property and Innovations (UANIPIO) is pressing ahead with ambitious plans that include implementing rules for the examination of applications, furthering international cooperation, contributing to the promotion of innovation in the country, and developing the staff’s skills and qualifications.

In an interview with the INTA Bulletin, and to mark the establishment of the new Office, UANIPIO Director Olena Orliuk describes how UANIPIO has taken over the functions of the National IP Authority in Ukraine from the Ukrainian Intellectual Property Institute (Ukrpatent) and its goals for the future.

A Kyiv native, Ms. Orliuk has worked in intellectual property (IP) since 2004. She served as the head of the Scientific Research Institute of Intellectual Property of the National Academy of Law Sciences of Ukraine for over 15 years before returning to her alma mater, Taras Shevchenko National University of Kyiv, in 2020, to become the first woman to lead the university’s faculty of law. She joined UANIPIO at its launch in summer 2022.

On behalf of the INTA community, I would like to offer our words of support and express our gratitude for finding time to meet for this interview despite the incredibly difficult time for Ukraine. How are you, your family, and your colleagues holding up?
We are pleased to have the opportunity of this interview to share our impressions and our vision of the situation, as well as our perspectives.

Humans can adapt to anything, so we have also got used to what is happening around us. On Friday (February 10), when there was another missile attack and 100 missiles were heading for Ukraine, I caught myself having a few thoughts: “Good that it’s happening on Friday, such that the weekend will be quiet” and “since they shot out till noon, we still have time to work a little bit,” given that on Friday the air raid sirens sounded around four times.

The anniversary of the beginning of the war, February 24, is approaching. We often recall how it was in the first days, when we were constantly bombed, when blackouts started, when we realized the possibility of a nuclear explosion. But you get used to it when you see what is happening on the frontline and lots of military around, when you maximize your participation in volunteer activities, and you just try to work selflessly, understanding that at least with this you contribute to our victory. All men in my family are in the Armed Forces, with daughters in service. We all are sure that we will win.

We deeply appreciate the support provided by the international community. Without their help, there probably would have been a different result in how we are sustaining Ukraine now. But we keep up the resistance and we keep working toward our goal.

What are the main objectives and expectations of the new Office?
It has to be not only a full-fledged IP office, which serves the creative industries, and which takes copyright on itself and so on, it must be the central platform which supports the development of the innovation sector. Given our status as a candidate for accession to the EU, Ukraine is a country where innovation occurs. However, we have to create absolutely all conditions that conform to the law and practice of a civilized state. Post-war Ukraine will develop innovatively, and the role of our IP office will be key.

How has the process gone in terms of transferring responsibility to the new Office?
The Office has been fully functioning since January 1, 2023. We could access our registers and databases and we started to issue titles of protection for IP rights (already more than 1,500). We are observing just a small outflow of examiners abroad. At the same time, a lot of specialists who left the previous Office in recent years have come back. Thus, in general, our examiners’ corps is well-staffed.

We also meet the characteristics of an international search authority and have restarted work on the Madrid Protocol, PCT [Patent Cooperation Treaty], and other international agreements. Simultaneously, we are reviewing the Office’s databases and considering how we can improve them, in cooperation with our international partners, including WIPO [the World Intellectual Property Organization], the EU Delegation, and the USPTO [United States Patent and Trademark Organization] IP attaché. We need their help with access to other databases, to make them free for us at the time of war, if possible, as well as expert support for the great plans we have to implement our roadmap.

We are also interested in advanced training for our examiners’ corps, which we have also discussed with our international partners. As we want to improve our IP Office and keep the status of an international search authority, we will announce our plans for involving international institutions in helping us increase professional development soon. Furthermore, since Ukraine is planning to become a member of the EU, our level of qualification must correspond to the level of qualification in European IP offices.

There is no drop in the number of applications. Instead, we are observing an increase in filings. Our Office is handling this situation and keeps holding the economic front. In time of war, IP certainly is not the first item on the agenda, but we need to prepare while the war is ongoing, so when Ukraine is at peace again the IP field will be ready to function in a developed and civilized state.

How is the Office adjusting to the current circumstances and working to protect the interests of IP rights holders affected by the war?
The government issued the Law of Ukraine No. 2174-IX of April 1, 2022, “On the Protection of the Interests of Persons in the Field of IP During the Period of Martial Law,” which stopped the running of the terms related to the protection of IP rights, as well as the terms related to the procedures for acquiring these rights. The Office prepared proposals to clarify some provisions to ensure the maximum protection of the interests of IP rights holders.

The transition period from Ukrpatent to the new IP Office was completely in the interest of applicants. We overlooked inconsistencies in payment documents regarding a responsible IP authority. Also, UANIPIO unconditionally executed court decisions in cases where the party was Ukrpatent. All this was done because we work in the interests of the market.

Please elaborate on any significant changes you are planning in IP legislation.
We have started working on the rules for the examination of applications. The laws on the fulfilment of obligations according to the EU-Ukraine Association Agreement were adopted in 2019–2020, but rules implementing their provisions have not been updated yet. The rules for the examination of trademark applications will be first, then we will get to inventions and industrial models since there are some issues related to, for example, pharma and biotechnology, which require more attention and involve more specialists.

The Office filed drafts of regulations on the certification of intellectual property practitioners (patent attorneys). Launching this process is an important step that the IP community has been waiting for since 2017.

We have just discussed a draft of regulations on implementing the new copyright law [Law of Ukraine No. 2811-IX of December 1, 2022, “On Copyright and Related Rights”] and created an expert group to work on works in the public domain and orphan works.

The Commission of Appeal and the Commission on the approval of issues on the introduction of the wording containing the official name of the state of “Ukraine” to trademarks, are expected to restart their work very soon. It is a very important step because many people want to use the word “Ukraine” in their trademarks as part of national brand development.

The draft law No. 6464 of December 24, 2021, on amendments to some legislation regarding the strengthening of IP rights protection, is yet to be adopted and will also regulate the use of the national emblem of Ukraine in trademarks.

We are drafting the roadmap on accession to the EU and are working on around 50 acts. Once the draft law No. 6464 is adopted, we will have completely fulfilled our IP obligations under the EU-Ukraine Association Agreement. Then our status as a candidate can move further along. I really want to make progress in the near future because, for me, IP is a direction which shows the possibilities for a nation’s intellectual development. As the head of the Office, I want to make the maximum effort to increase applications, not only because we provide a high level of IP protection, but also because we work hard to create all types of IP protection within our power.

In this light, we cooperate with law enforcement authorities on (1) developing common policies involving our Office in the fight against counterfeiting; and (2) discussing how we can assist in general, for example, by increasing the qualifications of personnel, by consulting, and by drafting procedural documents.

We stand firm in our direction on sanctions activity. We not only execute National Security and Defense Council of Ukraine decisions on people on sanctions lists, but we also work closely with the Agency for Investigation and Management of Assets, the National Security and Defense Council of Ukraine, and the National Agency for Prevention of Corruption in creating mechanisms for the effective management of IP under sanctions.

The important part of our work is to increase respect for IP, the popularization of IP in Ukraine, and its further commercialization. Many problems in this field include a lack of specialists and a lack of a public platform to provide information or consulting services. For us, working with innovation centers, such as the Ukrainian Startup Fund, is a priority. We can’t support them financially, but we will be working with them on how to promote innovation activity and entrepreneurship. We are looking for tools and partners to help the SME [small and medium-sized enterprises] sector to get involved in IP as we understand that it is the SME sector which mainly creates IP.

We are very interested in creating an IP court. I was one of the experts for the international project on the creation of an IP court which was held in the UK under the auspices of the Ukrainian government. Since 2004, I have been trying to launch one. We believe that an IP court will work once the High Qualification Commission of Judges of Ukraine is restored. Full IP protection is impossible without an IP court. On the other hand, we have opened a mediation center. Mediation is not compulsory, but we want to create a good culture and diversity in choosing a method of protection.

Our Office should be associated not only with quality services, growing digitalization, and high standards of management, but also transparency and zero tolerance for corruption. It is those qualities on which the Office will be building up its future activity.

Editor’s Note

Thank you to Yuliya Prokhoda, from the National Association of Patent Attorneys of Ukraine, for facilitating and participating in this interview.

2023 Annual Meeting Live+ Educational Session

Capsule Keynote—IP Is Everywhere: Ukraine’s Perspective on Managing IP Assets
Tuesday, May 16, 1:30 pm–2:30 pm

IP is everywhere and brings businesses closer beyond physical borders. During the last decade, Ukraine has emerged as one of the leaders in global markets of food-related items and remains one of the key trading partners for Europe, the USA, and China. According to the World Bank, pre-2022, Ukraine was a growth center for agriculture, pharmacy, education, and oil and gas. And even now, after one year of the Russian invasion, it remains important for the global economy.  Hear directly from representatives of National Association of Patent Attorneys of Ukraine on how businesses can continue to build an IP portfolio in Ukraine, along with comprehensive guidance on the IP landscape of Ukraine. Topics of discussion include:

• The business of innovation: An overview of the potential investment opportunities and the startup ecosystem
• The business of IP: The IP best practices adopted by Ukraine to foster an IP-centric mindset with businesses, IP enforcement, and sanctions and how to ensure adequate growth of the IP network
• International reconstruction programs in Ukraine: The role and significance of IP assets for businesses
• The current state of Ukraine: Developing and sustaining businesses

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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