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Education on intellectual property

Soloshchuk M., Shuba I. Fortune of «Intellectual property» discipline in times of changes

P. 5–16

The article examined the relationship, the awareness of students of fifth year on the issues of intellectual property, plagiarism, buying counterfeit goods. Problem questions of formation of education as a prerequisite for a democratic society. It has been proven unreasonableness delisting mandatory discipline «Intellectual Property».

Keywords: intellectual property, plagiarism, counterfeiting, еuropean integration,      the mentality, awareness, licensed software

 

Patent Law

Kapitsa Yu. The European patent with unitary effect and new opportunities of patenting in the European Union

P. 17–27

The article devoted to the analysis of the unification of invention protection in the EU and to the main stages of introduction of European patent with unitary effect (EPUE)

It is noted that the European patent system’s development had been discussed by Plomer Aurora, Wadlow Christopher, Jens Schovsbo, Geertrui Van Overwalle, Jan Smits, William Bul, Joseph Straus, Winfried Tilmann, Niels Holder, Stefan Rolf and other European specialists, as well in the publication «Intellectual Property Rights of the European Union and Ukraine legislation» 2006.

It is shown that the formation of a unified EU patent protection and implementation of steps to harmonise legislation on the protection of inventions — was the first of the initiatives of the EEC on the introduction of a regional system of protection of intellectual property rights.

However, the unification of legislation for the protection of inventions and creation of a single patent protection lasted about 60 years. Unlike the legislation on trade marks, industrial designs, geographical indications, copyright and related rights, its feature was the significant role of international agreements in the harmonization of national legislation and the construction of a regional system of uniform protection of inventions as a complex system of international law, EU law and national law of EU Member States.

  1. The peculiarity of the unification of the laws of EU Member States concerning inventions was the achievement of unification with the adoption in 1963 by the Council of Europe Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions, Strasbourg and in 1953 — European Convention relating to the formalities required for Patent Application, Paris etc.
  2. The second stage of unification corresponds to the attempts of EEC in the years 1965–1989 to create a Community patent system as an important instrument of the common market, with the European patent that should act simultaneously on the territory of the Member States (draft Convention on European patent law, 1962; the Convention for the European Patent for the Common Market, 1975, amended the Agreement relating to Community patents in 1989).

However, instead of implementing this idea preference was given to the decision, the less limited the competence of the Member States with the adoption in 1973 of the European Patent Convention and the creation of the European Patent Office, whose work was outside the competence of the EU.

  1. The third stage of the unification of national legislation due to the introduction of the single European patent and has fundamental differences compared to the introduction of Community industrial design and the Community trade mark as to legal grounds and concerning the effect of instruments of international law.

Unlike common titles: Community industrial design and trademark, which are based exclusively on the EU acquis and EU court system, the single European patent is granted by the European Patent Convention, which is outside EU jurisdiction only on the territory of states which are parties of the mechanism of enhanced cooperation.

Thus besides the EPC rules —  the obtaining and using patents is regulated by the provisions of EU law and substantially — by the legislation of the Member States, Consideration of a EPUE disputes should be conducted according to Agreement on a Unified Patent international treaty.

Notwithstanding that the Court should cooperate with the Court of Justice — the Court of Justice rules on EU law only in relation to the proper interpretation of the provisions of Regulations 1257/2012 and 1260/2012.

These complications led to the evaluation of a single patent as a result of a large degree of political compromise than legal certainty.

  1. An important result of the introduction of a EPUE — is to reduce of the cost and effort to ensure the protection of inventions in the territory of the Member States compared with the EPC with the patent acting simultaneously on the territory of Member States.

At the same time, the new system is characterized by a mixture of legal cultures of the ember states with the lack of compromise on certain issues, gaps, particularly relating to: complicated legal regime of the EPUE (is defined by international law, EU law and national law); absence of the protection on the territory of all EU Member States (only in the Member States of the mechanism of enhanced cooperation); complicated judicial system of indirect participation in the proceedings the Court of Justice; referring of a number of substantial issues to national law, which may lead to differences in the application etc.

Keywords: patenting in Europe, inventions, intellectual property, European patent with unitary effect

 

Olefir A. Limiting of the scope of patent protection as a means of restoring competitiveness of pharmaceutical industry

P. 28–40

In the article were investigated problems and particular ways of restoring the competitiveness of the Ukrainian pharmaceutical industry. Also were made several propositions of state regulation of economic relations that involve changing the legal regime providing patent protection with the peculiarities of the pharmaceutical sphere.

Key words: intellectual property, innovation, patent, invention, utility model, industrial design, competitiveness, pharmaceutical industry

 

Contractual arrangements

Rabotiagova L. The invention and utility model as objects of contractual regulation

P. 41–51

The article describes the invention and utility model as the object of the contract on the order of intellectual property rights. Particular attention is given to establishing the validity of patent rights, the scope of rights conferred by the patent for invention and utility model patents, the probability of recognition of the patent invalid in whole or in part. The necessity of a detailed study of the subject and object of the contract is shown before the conclusion of the agreement to reduce the risks associated with its implementation.

Keywords: invention, utility model, intellectual property, objects of industrial property, contractual relations

 

Zinych L. Aspects of state’s participation in contractual relations regarding the usage of industrial property objects

P. 52–58

The article is dedicated to reviewing the distinctive characteristics of state’s participation in contractual relations regarding the usage of industrial property objects. The relevance of the given topic is based on the necessity of state enterprises, institutions and organizations to use new inventions, utility models and industrial samples, due to the difficult state of the economy of the country. In this regard we have analyzed the legislature about the legal status of the state in the relationships of civil law. We have reviewed various scientific opinions regarding the legal personality of the state as the participant in the relationships of civil law. It is claimed that the state has a special legal status in the relationships of civil law, combining two types of legal personality — public and civil. The main goal of the state’s participation in contractual relations is to satisfy a certain state or social interest, and contractual form is the most effective means of reaching this goal.

It is determined that state enterprises, institutions and organizations are legal entities of public law. The author established that the state can act directly and indirectly in the relationships of civil law; directly with the help of the bodies of state authority, and indirectly through the legal entities of private and public law.

We have analyzed the contracts aimed at the usage of objects of intellectual property, among which there is a license for the usage of an object of intellectual property and a license agreement. Established that the essential conditions of license agreements are the following: the condition of the subject of the license agreement (the rights provided under a license agreement);.

The article defines the characteristic features of execution of contractual relations regarding the usage of the objects of industrial property. The author highlights the necessity of differentiation between the cases when state enterprises, institutions and organizations enter into contractual relations not out of their own interests, but on behalf of the state, and vice versa. When a contract state enterprises, institutions, organizations acting on behalf of and in the interests of the state, when it is clearly stipulated in the contract and agreed upon by the parties. Whereas while ensuring the ongoing activities necessary to maintain the operation of enterprises, institutions and organizations, such as technical support, act as an independent participant of civil relations.

Key words: state, contractual relations, usage, objects of industrial property

 

Vakhonieva T. Concept and types of agreements on creation and transfer of copyrighted works

P. 59–68

This article investigates the concept of publishing agreement and contains analysis of some terminological problems of copyright contract law. It is determined that a publishing agreement is used to transfer property copyright within publishing relations. A publishing agreement is an agreement by which an author transfers or agrees to transfer his property rights to the other person wholly or partly on terms determined by the parties. However, a publishing agreement is viewed not as a way of copyright alienation but rather as means of copyright implementation.

It is defined that a subject matter of publishing agreement is a transfer of property rights connected with the opportunity to use a work in different ways. Transfer of a right to use a work by other persons can be carried out on the grounds of a publishing agreement on a transfer of exclusive right to use a work or a publishing agreement on a transfer of non-exclusive right to use a work. While analyzing the main types of publishing agreements, we can point to the possibility of concluding publishing agreements on creation of copyrighted works and agreements on transfer of a right to use a work. Publishing agreement on a work creation has some peculiarities. Such an agreement should set out in details a type, genre, form, volume of a work, etc. Publishing agreement on a transfer of rights to use a work relates to a work already created, and a person that acquires the right to use a work has the opportunity to evaluate this work and its main qualities before concluding an agreement.

It is determined that differentiation between publishing agreements depending on the way the work is used has a particular importance. There is no such differentiation between publishing agreements at the legislative level. Agreements of this type include publisher’s agreement, agreement on deposit of manuscripts, scenario contract, staging agreement, contract of commission of an artistic work, public performance agreement, contract for the use in industry of works of decorative-applied art, etc.

While analyzing the main legal features of publishing agreements of different types, the author focuses on the essence of binding publishing legal relations, defines legal content of main types of publishing agreements, and establishes criteria for distinguishing between publishing and other agreements. Distinguishing between publishing agreement and labour and civil agreements continues to be an urgent matter.

According to the content of legal standards of intellectual property right and the essence of publishing legal relations it is important to note the existence of special type obligations in the sphere of intellectual property that involve contract obligations connected with the creation of artistic results and use of exclusive rights. Law of obligations standards in this sphere stand for a special institute of civil law that regulates relative by its nature legal relations resulting from protected results of intellectual activity and exclusive rights concerning them.

Key words: publishing agreement, exclusive rights, non-exclusive rights, copyrighted works, copyright alienation

 

Defence

Shtefan A. Admissibility of evidence in civil proceedings

P. 69–77

According to the Article 59 of CPC of Ukraine the court shall not take into account the evidence obtained with violation of the procedure established by law. Circumstances of the case that must be approved by certain means of proof under the law cannot be approved by any other means of proof.

Based on the legal regulation, evidence is admissible when it confirms to the following requirements:

1) evidence must be prepared in compliance with the procedure established by law. Admissibility of evidence is characterized by organic connection of procedural form of means of proof and the legitimacy of the obtaining of the information about a particular fact relevant to the case. Therefore, the obtaining of evidence in the compliance with the procedure established by law should be understood as the absence of violation of substantive law and procedural law in the obtaining of evidence;

2) evidence must be prepared with means of proof provided by law such as explanations of the parties, third parties, their representatives exanimated as witnesses, testimony of witnesses, physical evidence, including sound and video recordings, statements of experts.

Conclusion on the inadmissibility of evidence which is not abidance by statutory form may be made by the court directly on the basis of substantive law that sets requirements for the mandatory written form of certain types of transactions, the mandatory notarization or state registration. The information about other violations of substantive law in obtained evidence is often not obvious to the court, as well as the information on the illegality of the basis of the evidence. Parties and other persons involved in the case may have this information but the current legislation does not regulate the procedure of the notification of the court of an offense which prevents the use of evidence such as obtained in violation of law.

The competitiveness bases of civil procedure provide opportunities for active protection of rights and interests in the court. In my opinion, the motivated note of a party or other person involved in the case of violation of the law in obtaining of evidence submitted by another person should take a place in these opportunities.

Every person involved in the case should have the right to apply the note about the inadmissibility of evidence on grounds of violation of the law. On the assumption of the part 1 of Article 27 of CPC of Ukraine such a note may have an oral or writing form and must contain the reasoning, justification, explanation why the evidence is inadmissible. The possibility of applying for the inadmissibility of evidence must exist in the proceedings in which the evidence was submitted since the opening of the proceedings till the termination of the case.

The consequence of the recognition of evidence as inadmissible is its inability to have the validity or the legal force. The validity of proof does not mean its actual opportunity to confirm or refute a fact but means the capacity of the evidence to serve as a means of establishing the circumstances of the case. Using the evidence which does not have the legal force contradicts the goal of justice, so the evidence obtained in breach of substantive and/or procedural law should be excluded from the evidentiary material in the case.

The study made in this paper substantiates the need for the amending of Article 59 of CPC of Ukraine and presenting it in a new edition.

Key-words: evidence, civil proceedings

 

Prokhorov-Lukin G. Problems of definition and damages in civil cases concerning the infringement of intellectual property rights in the EU

P. 78–87

This article is dedicated to questions of legislation and judicial practice of the EU countries about the compensation of damages in cases of infringement of intellectual property rights. The article deals with issues related to implementation of the EU’s Directive on the Civil Enforcement of Intellectual Property Rights in legislations and courts’ practice of Member States. In this respect, great importance is the definition of the principles and purposes of compensation for damage caused by violations of intellectual property rights. In this connection, great importance is the definition of the principles and purposes of compensation for damage caused by the infringement of intellectual property rights as well as approaches to the determination of the extents of damages and compensations.

Great practical importance has the position that the state should ensure that all elements of direct, indirect and consequential economic consequences to the right holder that result from an infringement are compensated by damages in civil cases, regardless of whether the infringement has taken place on a commercial scale. Also the state should provide that lump-sum damages, reflecting all negative economic consequences that the right holder has been reasonably found to have suffered, are available at the right holder’s discretion at least as an alternative to any lost profits that can be proved.

Legislative and judicial practice of the EU countries in matters of compensation for damage caused by the violation of intellectual property rights, without any doubt, should be used to improve the legislation and judicial practice of Ukraine.

Key words: intellectual property, the EU legislation, litigation, damages

 

Gumega O. Judicial protection of intellectual property rights in Ukraine as one of the principles of civil law

P. 88–95

The judicial protection of intellectual property rights is studied in the article through the light of the principles of civil law. Since at the present stage of reforming of legal regulation not only in the sphere of intellectual property, but also to upgrade the judicial system in Ukraine as a whole this principle takes on a new meaning. Among the conceptual changes carried out in the direction of judicial reform, effective protection is defined as prevailing direction of reform. The task of justice is defined as the equitable, impartial and timely dispute resolution in order to effectively protect the legitimate rights and interests of the people. Thus in making procedural decisions and the application of any procedural rules the court must be guided, first of all, by this the task of justice.

Accordingly, the principle of the protection of civil rights and interests is defined as one of the basic principles of civil law regulation. The common features of principles of civil law are established in general. The impact of the legal theory on the formation of branch principles of law is determined. The article highlights the notion of the nature and principles of civil law, in particular – the principle of the protection of civil rights and interests. The features of this principle caused by specific intellectual property rights, especially the acquisition of legal protection are identified.

The theory and current law in the determination of ways to protect intellectual property rights are analyzed as one of the factors that determine the characteristics of the principle of the protection of civil rights and interests protected by intellectual property rights. It is emphasized on the specifics of the ways to protect the violated rights for certain intellectual property objects, including objects of copyright, patent right, means of individualization etc.

Key-words: protection of intellectual property rights, protection of civil rights and intersts, civil law principle, court defense

 

Copyright

Petrenko A. Copyright in the sphere of the open source software

Р. 96–104

Current national civil legislation has lots of black holes in copyright of the open source software. The author discovered some issues of the worldwide open source licenses provided by programmers’ communities and software companies.

The six most used in the world license agreements are examined in the article. There was made an attempt to show the differences and similarities. The author answers a question about compatibility of some licenses. The main problem to solve in research was to found number and quality of legislation acts needed to make clear legislative background on copyright for open source software for public institutions in Ukraine. The rules and main goals of the governmental enactment for scientific-technical program of using open source software in government agencies for 2012-2015 are analyzed.

Ukrainian Constitutional Court in 2004 refused and didn’t start constitutional procedure in the case №2-42/2004, where deputies claimed to recognize open source software as a different object with unique legal status. This proofs the fact of convergent legal approach to definition of legal status of the proprietary and open source software in Ukraine till 2004. As the consequence open source producers in Ukraine had to fix their copyrights in contracts and patents. Such difficult way influenced very slow growth in this sphere. The main argument, introduced by the Court was absence of legal notions of «free software», «open source software» etc. As far as legal notions are in competence of parliament — Court, because of no power, refused to open constitutional procedure. Author offers the other vision of the problem — the only point of the constitutional claim was violated copyrights. State institutions have to protect rights also if it requires some additional research.

Problems and additional expenses, caused by the usage of the proprietary software are in complicated legalization procedures and about 400-1500 millions hryvnyas every 4-5 years. An optimal way to solve those problems is the forward transition of usage of the open source software and gradually to refuse from the proprietary software. The first priority stage for the Ukrainian Government to solve rising problems is to improve existing legislative background in copyright law in part of usage of the open source software.

Next two ways of acting were proposed by the Government. To promote the foundation, maintenance and renewing of the constant free of charge online resources of informational and linguistic software that is of highly importance. To endorse enough measures for implementing in the governmental agencies open source linguistic programs and other software, that have to be freely distributed by customers.

Results of the research work are covered by conclusions that Ukrainian software makers have to use worldwide open source licenses in addition with the national Governmental open source license, that have to be enacted to grow the outcome of the adopted and developed programs. Ways of choosing appropriate open source license, according to the native software foundation, were described as well.

Key-words: copyright, open source software, proprietary software, free license, license conditions

 

Ivaschenko V. Legal reglamentation of copyright in the USSR in 60–80s of XX century

Р. 105–111

The article analyzes the legal regulation of copyright in the territory of the USSR for 60–80s of XX century. Based on sources and some theoretical developments, a number of legislative steps show the Soviet authorities in reforming its own model of copyright protection. The author focuses on the fact that the basis of civil legislation of the USSR (1961) and the Civil Code of the USSR remained characteristic features of the previous law, namely, was left a significant list of cases of free use of works. Unlike Fundamentals 1929 was specified ownership of copyright for service work. Significant impact on the legislation of the USSR in the period made the signing Universal Copyright Convention. Soviet leadership had to amend certain provisions of the Principles of Civil Law of the USSR (1961), and the Republican Central Committee is especially concerned copyright in the translation. It can be argued that the USSR and the USSR were at that time quite a simple and effective system of copyright protection which were the core norms of the Civil Code, the typical copies of copyright agreements and certain international agreements with the countries of the Warsaw Pact.

Key words: the Soviet leadership, the Civil Code of the Ukrainian SSR, author, copyright objects, property rights, term of protection

 

Scientist’s view

Stefanchuk M. Тo the question of the historical and legal development of the category «natural person»

Р. 112– 118

The article examines the stages of formation of the category «natural person» in the legal doctrine of Ancient Rome, European legal traditions and civil law. The author’s attention is paid to the problem of reasons and approval system, individualizing signs of physical persons, as well as the evolution of the category «legal personality» as the main condition of participation of individuals in civil matters.

Keywords: individual, civil matters, a legal capacity, legal capacity, legal doctrine, individualizing features

 

Agafonova N. The issue of constitutional reform in modern Ukraine

Р. 119–131

The article emphasized the relevance of the study of the history of constitutional reforms since the constitutional reform in Ukraine is not completed and each new stage it must be  analysed in terms of its objectives, specific objectives, the role of the main actors and effectiveness. It is noted that a key factor that determined the course of constitutional reform in Ukraine is the Constitution of Ukraine in 1996, and this historic event should be considered a major milestone in the evaluation periods, stages and directions of modern constitutional reform. Five periods of constitutional reform in Ukraine are highlighted. The analysis of the periods and areas of constitutional reform in Ukraine is made, their common and different features are defined. We consider accompanying state-legal and socio-political events within a certain historical framework, the role of the main participants of the constitutional reform. It is indicated that the current period of constitutional reform in Ukraine caused by all the previous periods and stages. It carries the imprint of all the major contradictions as the content of the Constitution of Ukraine and the constitutional process that must be considered in the process of constitutional reforms.

Keywords: Constitution of Ukraine, constitutional reform, constitutional reform periods, areas of constitutional reform, constitutional process

 

Economics of intellectual property

Bayik O. On the issue of terminological definitions in the tax legislation of Ukraine (on the example of «royalty»)

Р. 132–141

The article analyzes the definition of the term «royalty», which is given in the «Financial encyclopedia», «Encyclopedia of intellectual property», encyclopedia «Finance. Budget. Taxes: national and international terminology» and «Great encyclopedic dictionary of law».

The article also examines the definition of «royalty» fixed in national legislation, specifically in the Tax Code of Ukraine, international treaties on avoidance of double taxation, and other legal acts.

The author of the article defines scientific approaches to understanding the «royalty», which is defined in the Tax Code of Ukraine and the ways of improving this term.

The article pays attention that current definition of «royalty», defined in the Tax Code of Ukraine, is still criticised by researchers and experts in the tax field.

N. Agafonova, D. Boiko, I. Bondarenko, V. Konovalenko, A. Lymanskii, V. Ostapchuk, V. Ryadinska and others scientists offer ways of solving problems with the definition of «royalty».

The author makes a conclusion that some terminology fixed in current tax legislation needs improving, particularly it concerns the term «royalty».

Taking into consideration that authors of above mentioned publications criticise fixed in the Tax Code of Ukraine explanation of «royalty», the author proposes his own definition of this term. Thus, royalty — is any payment received as a reward for the usage or granting of intellectual property rights, which are determined by civil legislation of Ukraine except as provided by law. It should be mentioned that art. 14 of the Tax Code of Ukraine contain a list of payments which are not considered royalties.

Key words: national legislation, tax legislation, Tax Code of Ukraine, royalty, payment, objects of intellectual property

№ 2 (88) 2016