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On the Regulations for the Board of Appeals
The current legislation of Ukraine in the field of intellectual property provides for the mechanism for applicant rights to be administratively protected by applying to the Board of Appeal of the State Department of Intellectual Property.
According to the Law of Ukraine “On Amendment of Certain Legislative Acts of Ukraine on the Legal Protection of Intellectual Property” of May 22, 2003 No 850-²V any oppositions of applicants on the State Department’s decisions concerning acquisition of rights to any intellectual property objects are subject to consideration by the Board of Appeal of the State Department in accordance with the procedure established in its Regulations.
Besides, the Law of Ukraine “On Protection of Rights to Trademarks and Service Marks” was supplemented by Article 25 "Protection of Rights to Well-Known Marks" setting down the protection of rights to any well-known mark to be provided in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property and the Law above on the basis of the mark being declared a well-known one by the Board of Appeal or a court.
The changes made in the legislation generated the need in elaborating new statutory document to regulate the Board of Appeals’ activity.
The Regulations for the Board of Appeals were approved by the Order of the Ministry of Education and Science of Ukraine No 622 of 15.09.2003 and registered in the Ministry of Justice of Ukraine on 30.09.2003 (No 877/8198).
The Regulations have determined the Board of Appeals’ procedure on considering any opposition on the State Department decisions concerning acquisition of rights to any intellectual property objects, the order of organizational and technical support for its activity as well as solving other questions within its competence.
The composition of the Board of Appeal is to be formed of experienced officers out of the personnel of the State Department and the Ukrainian Institute of Industrial Property (Ukrpatent).
According to the Regulations, the following persons are entitled to go to the Board of Appeal:
an appellant or a representative thereof – with an opposition on any decision of the State Department concerning acquisition of rights to any intellectual property object;
a trademark owner – with an application for its trademark to be declared a well-known one in Ukraine .
The current legislation has established the period within which an appellant may appeal a decision on its application before the Board of Appeals to be not more than 2 months from the date he received the decision or copies of required documents.
Upon payment of the fee for the issue of the certificate the right to appeal a decision on application before the Board of Appeals shall be forfeited.
The requirements concerning an opposition and supplements thereto have been established by item 9 of the Regulations. An opposition is to be stated in written form in Ukrainian and signed by the appellant or his representative. As to supplements, one may file them in Russian as well. Any supplements in any other language have to be translated into Ukrainian or Russian, otherwise they shall not be receivable.
An opinion has to come with the following papers enclosed thereto:
a copy of the State Department decision whereon the opposition is filed;
documents referred in the opinion as an evidence of the circumstances stated therein;
a document of payment of the fee for filing the opposition;
a power of attorney that confirms the representative’s authority to file the opinion (on case of filing an opposition through a representative) or its certified copy.
The order of paying a fee for filing oppositions and the rate thereof are established by the Provision on the Procedure for Paying Fees for Actions, connected with the protection of intellectual property rights, confirmed by the Decree of the Cabinet of Ministers of Ukraine No. 543 of May 22, 2001 and amended by the Decree of the Cabinet of Ministers of Ukraine No. 901 of June 16, 2003.
In case of filing an opposition to the Board of Appeals without any document of fee payment such opposition shall be considered to be unfiled, the appellant being notified thereof.
An opposition and supplements thereto are to be filed to the Board of Appeals in duplicate.
An opposition shall be considered to be filed to the Board of Appeals on the day of its coming in together with a duly executed document of fee payment or on the day of its mailing together with the stated document.
An opposition is to be considered within 2 months from the date of receipt of the opposition and the document of fee payment subject to provisions of item 17.3.18 of the Regulations about staying proceedings by the panel of the Board of Appeals. The term of the opposition consideration may be extended by the appellant initiative, but at most by 2 months, provided that within these 2 months the appellant files the corresponding petition and pays the charge for its filing.
Item 17 of the Regulations is just determining the order of an opposition consideration including two stages: preliminary consideration thereof and consideration at an appeal session.
During preliminary consideration the opposition shall be examined for compliance with the following requirements specified for oppositions to be lodged: a term of lodging, execution of the opposition and its substance, a power of attorney, documents in evidence of circumstances stated in the opposition, etc.
In case of the opposition being unqualified it shall not be considered, the appellant being notified of the need to correct defects. If the appellant does not update the opposition papers, he would be notified of refusal to consider this opposition.
In case of the opposition being legally qualified the appellant shall be notified of its admission to consideration. The question of admitting the opposition is within the panel competence.
In case of admission of the opposition for consideration the prosecution of the patent application shall be stayed up to the Board of Appeals’ decision being approved.
Upon admission the case concerning the opposition shall be pre-examined for consideration in the appeal session. Upon completing such preparatory examination the date of session is to be specified and parties to consideration are to be invited.
The panel may delay consideration of the opposition by the reasoned motion of any party. In such a case the new date of holding the session shall be specified.
The panel may delay consideration of the opposition by default in the absence of data confirming the notice being served. However, if the panel has the information about service impossibility, the opposition could be considered by default. Therefore all parties to the opposition consideration proceedings are to notify the panel of changes in their addresses.
The panel may shelve consideration of the opposition if failing a party the session could not be held. But in case of the second failure to appear at the session, irrespective of its reason, the opposition may be considered by default as well.
The opposition shall be considered by oral proceedings without changes in the panel composition. In case of replacing a member of the panel while the opposition being under appeal proceedings fresh oral proceedings shall be held from the very beginning.
The appeal proceedings should be recorded in the form of Minutes duly drawn up.
An appellant has the right to withdraw its opposition at any stage of its consideration before announcing the operative part of the panel decision. In case of such withdrawing the parties shall be noticed of terminating consideration of the opposition.
Upon consideration of the opposition on the merits the panel shall make a decision. When making the decision no one is entitled to be in the appeal session hall but the panel members. The decision they made is to be stated in written form and signed by all members of the panel.
The Chairman of the Board of Appeals shall announce its decision after completing consideration of the opposition. By mutual agreement of the parties only introductory and operative parts of the decision may be announced.
The Board of Appeals’ decision shall enter into force upon being approved by the State Department Order. The approved decision shall be sent to the appellant.
Before the Board of Appeals’ decision is approved, within a month from the date of its making, such decision may be protested by lodging the written evidence in support of the opposition. The grounds for lodging a protest under item 19 of the Rules could be as follows: violation of the current laws by the Board of Appeals’ panel when making its decision as well as violation of due opposition consideration procedure. The Board of Appeal in its new composition shall process the protest within a month from the date of its lodging. The Board of Appeals’ decision made on the protest shall be final and subject to judicial revocation only.
An appellant may appeal against any decision of the Board of Appeal judicially within two months from the date of receipt of such decision, provided the decision is approved by the State Department.
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