New law adopted. LA Law Firm participates in drafting the law on termination of "evergreen" patents during wartime

Head of Intellectual Property Practice Vitalii Savchuk and Associate in Intellectual Property Practice Oleksandr Tsurkan, along with the Ministry of Economy of Ukraine, the Ukrainian Intellectual Property Institute, the Ukrainian National Office for Intellectual Property and Innovation, participated in the second reading of Draft Law No. 8393 On Amendments to the Law of Ukraine On the Protection of Interests of Persons in the Sphere of Intellectual Property during the Martial Law in connection with the Military Aggression of the Russian Federation against Ukraine, aimed at improving patent legislation (the Draft Law).

On April 16, 2025, the Draft Law was approved at second reading and has just been signed by the President of Ukraine.

The most important issue addressed by the adopted Draft Law is the complete reinstatement of all intellectual property (IP) terms that had been suspended since April 2022 under Law No. 2174 On the Protection of Interests of Persons in the Sphere of Intellectual Property during the Martial Law in connection with the Military Aggression of the Russian Federation against Ukraine (Law No. 2174).

The final version of the Draft Law includes the following key provisions:

• Complete repeal of Law No. 2174.
• The Draft Law enters into force 30 calendar days after its publication.
• IP rights holders will have 75 days to fulfill all obligations (paying fees, submitting petitions, applications) that were suspended or not fulfilled during martial law under Law No. 2174.
• If the holders miss the specified 75-day deadline, their IP rights will be considered terminated from the date on which they should have expired without the extension under Law No. 2174.

For instance, if a trademark renewal fee was due in 2023, but has not been paid within 75 days of the new law coming into force, the trademark certificate will be considered expired as of 2023.

The LA Law Firm team notes that Law No. 2174 was enacted in the early weeks of a full-scale invasion and played a crucial role in preserving the intellectual property rights portfolio in Ukraine. However, over time and with the partial restoration of business and commercial activity, this law started to create obstacles to the movement of IP assets and generated legal uncertainty regarding the protection terms, the possibility of non-payment of fees and an unlimited period for appealing the registration of rights.

Additionally, contradictory provisions of the Law enabled courts to take a legal position according to which the validity of patents during wartime can be extended beyond the maximum term of 20 years (or 25 years for medicinal products).

"The core idea of a patent is to protect one's own technology for 20 to 25 years and to have the exclusive right to use it (being the sole seller or supplier). In return, inventors disclose the essence of their patent to the whole world, allowing anyone to use the technology once the protection period ends. The Law and its interpretation by some courts effectively made patents 'evergreen' disrupting market balance and granting patent holders additional years of monopoly. Our work on this Draft Law is aimed at correcting this imbalance," Oleksandr Tsurkan comments.

The adopted Draft Law will reset all terms and restore the full-fledged work of institutions in the field of intellectual property.

"This Law is necessary to restore the balance of rights and return Ukraine to European and global standards. Following Law No. 2174, Ukraine became nearly the only country where patents could be valid indefinitely, fees were not paid, and the protection term was uncertain. Our work is aimed at resuming the work of the Ukrainian National Office for Intellectual Property and Innovations, timely patent expiration, opening the market to new entrants, stimulating business activity and enhancing competition," Vitalii Savchuk comments.

LA Law Firm continues to work on intellectual property reform, particularly on the implementation of the Bolar exemption (preparation of draft law No. 13087 for second reading) to ensure fair market conditions in Ukraine, while balancing the rights of patent holders and the needs of patients.

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Should you have any inquiries or suggestions, please contact Vitalii Savchuk, Partner and Head of Intellectual Property Practice at LA Law Firm, via email: savchuk@l-a.com.ua.