On Wednesday, March 6, the Ukrainian Bar Association's Intellectual Property Committee held a roundtable discussion on "Can Patents in Ukraine be Valid for More Than 25 Years?".

The discussion was focused on the problems of application of the Law of Ukraine "On Protection of Intellectual Property Interests during the Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine", in particular in the field of patenting of medicines.

The roundtable began with a welcome speech by Tetiana Kharebava, Chairman of the UBA Committee on Intellectual Property. The discussion was moderated by Oleksandr Mamunya, Member of the Board of the UBA Committee on Intellectual Property, Managing Partner at Mamunya IP.

Mr. Mamunya reminded that, according to the explanatory note to the draft of the above-mentioned Law, adopted on April 1, 2022, the purpose of this act is to:

• to prevent the loss of intellectual property rights during the period of martial law, when constitutional rights and freedoms of a person and citizen may be restricted, as well as temporary restrictions on the rights and legitimate interests of legal entities may be introduced;
• to suspend the time limits related to the protection of intellectual property rights, as well as the time limits for the procedures for acquiring these rights, as defined by special laws of Ukraine in the field of intellectual property and bylaws;
• offer the opportunity to submit documents (applications, petitions, objections, responses, etc.) required by special laws of Ukraine in the field of intellectual property within 90 days from the date of lifting martial law, without paying a fee for the extension, prolongation or renewal of the relevant terms.

The Law stipulates that from the date of the introduction of martial law in Ukraine in connection with the armed aggression of the Russian Federation, the time limits for actions related to the protection of intellectual property rights, as well as the time limits for the procedures for acquiring these rights, as defined by law, are suspended. At the same time, intellectual property rights that expire on the day of the introduction of martial law in Ukraine or during the period of martial law shall remain in force until the day following the day of termination or cancellation of martial law. Starting from the day following the day of termination or lifting of martial law, the validity of intellectual property rights may be extended in accordance with the established procedure, taking into account the specifics established by this Law, said Oleksandr Mamunya.

As a result, the patents of a number of drugs, which should have expired after their extension, continue to be valid, such as caspofungin and etoricoxib. This has led to a number of lawsuits filed by foreign manufacturers to protect their infringed intellectual property rights, including against the state represented by the Ministry of Health of Ukraine.

The following experts joined the discussion:

• Petro Borovyk, patent attorney;
• Anastasia Gomeniuk, Researcher at the Department of Intellectual Property and Human Rights in Healthcare of the Research Institute of Intellectual Property of the National Academy of Legal Sciences of Ukraine;
• Natalia Driuk, Member of the Board of the UBA Committee on Intellectual Property, Partner at AEQUO;
• Taras Kyslyy, Member of the Board of the UBA Committee on Intellectual Property, Partner at Arzinger;
• Veronika Kochubey, project manager on intellectual property issues at CO "100% Life - PLWH Network";
• Olena Orliuk, Director of the Ukrainian National Office of Intellectual Property and Innovation (IP Office) (online);
• Victoria Sopilnyak, member of the UBA Intellectual Property Committee, partner at Doubinsky & Osharova;
• Inna Shatova, Deputy Head of the Department of Intellectual Property and Innovations - Head of the Department of State Policy in the Field of Intellectual Property of the Ministry of Economy of Ukraine;
• Dmytro Lurie, project manager at Medicines for Europe (online).