№ 4 (114) 2020

Download Journal № 4 (114) 2020

Dovbysh О. The Use of the US doctrine «work made for hire» in the field of information and communication technologies in Ukraine. The global information technology industry is on pace to reach $5.2 trillion in 2020. The United States is the largest tech market in the world, the majority of technology spending (68%) occurs beyond its borders. Ukrainian developers create big part of the intellectual property objects for US.

The article touches upon basic issues for the application of US doctrine «work made for hire» in the field of information and communication technologies(ICT) in Ukraine. Many conflicts arise in legislation during the relationship between private law rules of several states. Therefore, the historical conditions of the doctrine, its concept and content, the main elements, and the possibility of its application to IPR in the field of ICT are analyzed.

US law guarantees the protection of the author’s rights. But doctrine is an exception to that rule. However, in the field of ICT, when concluding contracts, the jurisdiction and law of the country are always consistent. That is why the application of the doctrine of «work made for hire» in the terms of the contract will result in a «proper violation» of peremptory norms, which will deprive the author of the entire volume of rights to the work and make it impossible to defend in court. Due to the fact that there is no reliable source of information, new cases arise that require new decisions that are not provided for by law.

Particular attention is devoted to comparing the American doctrine of «work made for hire» in contracts with the Ukrainian executor of works. There is no doubt that such conformity is an evaluation concept and requires expertise in ICT.

In conclusion, it was proved that the full application of the concept of «work made for hire» in the conditions of the current Ukrainian legislation is impossible. Because it contradicts the peremptory norms of Ukrainian law, allows the interested party to circumvent these norms, without any consequences, depriving the author of legal rights, difficulties arise when trying to recognize copyright in court. Conversely, it is possible to prevent the resolution of conflicts of law under the condition of proper and consistent conclusion of contracts.

Keywords: intellectual property, work made for hire, software, agreement, author right, copyright law

Ulitina O. Culinary products as untypical copyright objects. Nowadays the process of cooking is becoming more creative, it acquires certain features of art. Cooking is developing not only at the level of the restaurant business because of the special creative contribution of the chefs, but also in the kitchens of ordinary people who are trying to add diversity to their dishes. Today, food should be not only delicious, but also aesthetically pleasing. «Instagram dishes», «Instagram plating» are especially popular, because of their attractiveness and unusual look.

The article is devoted to the study of the copyright protection of culinary products. The copyright legislation of Ukraine and some foreign countries, which in one or another way can be used for protection of the intellectual property rights to culinary products are analyzed.

The article also considers the question of whether culinary products can be recognized as derivative works. It is determined whether the recipe can be protected by copyright and established how the concepts of culinary product and recipe relate.

Author states that a culinary product as a category consists of four components: 1) idea (recipe/technological process of production), 2) name, 3) the process of cooking itself, and 4) platting (presentation of the dish). The concept of «recipe» is absent at the legislative level in Ukraine.

According to the Ukrainian and foreign scientific sources the recipe can be protected by copyright as a literary work. However, in this case only the form in which the recipe is expressed (fixing in tangible medium of expression) is protected. The idea, the essence of the recipe will not be protected under the copyright protection. Therefore, the protection offered by the copyright law in this case cannot be used to protect the rights to a culinary product made by the recipe.

The finished dish is the final product of the recipe, the result of being fixed in a tangible medium, similar to the architectural projects and buildings in which the projects are «fixed».

The author claims that some culinary products can be recognized as a derivative works which relates to the original works of fine art. A specific category of Ukrainian legislation — branded food can be protected by the norms of Ukrainian copyright law.

Key words: copyright, untypical objects, culinary products, copyright protection

Verbenskyi M., Fyl S. Patenting of secret inventions and utility models as a tool to protect the national interests of Ukraine.
The article examines the issues of legal protection of secret inventions and utility models in the context of protection of national interests of Ukraine. The national procedure for acquiring property rights to inventions and utility models established by the norms of the current national legislation is analyzed. Comparing the mechanism of legal protection of intellectual property rights to open and secret technical developments, the peculiarities of acquiring rights to secret inventions (utility models) and the use of rights to such industrial property are highlighted. Examining the procedure for acquiring property rights to secret technical solutions and their implementation, it was found that the patent as a tool for legal protection of technical developments containing information classified as state secrets, has its own legal regime that combines current legislation in the field of state secrets and intellectual property. It is emphasized that a patent for secret objects of industrial property is issued for a period, as well as for open 20 years for the invention and 10 years for the rat model, but their validity depends on the period of secrecy of these developments. The use of rights arising from a secret patent also has its limitations, in particular: the patent owner may not authorize other persons to exercise the rights to such secret inventions and utility models without the permission of a state secret expert. It is noted that the state monetary compensation to the owner of patented secret technical solutions for the payment of fees for filing an application and maintaining the validity of a secret patent generally does not compensate the owner of classified developments for all costs and restrictions associated with the possible use of such patents. Considering the content of criminal liability for illegal use of rights to patented secret developments, it was found that such an offense gives rise to a set of crimes.

Key words: secret inventions and utility models, patent, national interests

Zhikharev О. Special aspects of the expert’s examination of designs with respect to changes to legislation.
The Draft Law on Amendments to Certain Legislative Acts of Ukraine on Strengthening Protection of Rights to Trademarks and Industrial Designs and Combating Patent Trolling N 2258 of October 11, 2019 provides for changes in the interpretation of the scope of rights for an industrial design. According to the proposed changes, the scope of rights for a registered industrial design is supplemented by the following: the scope of legal protection of an industrial design includes any other industrial design that does not make an disparate general impression on the informed user. To determine the scope of legal protection, the degree of freedom of the author (designer) is taken into account during the creation of an industrial design. The degree of freedom of the author is a new criterion that must be taken into account when determining the scope of rights to assess the individual character of an industrial design. The degree of freedom of the author is determined by Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (Section 2, Article 10 of the Regulation). The definition of this criterion and its impact on the scope of rights depends on the design techniques adopted in the industry in which the product can be used, the appearance of which is the subject of an industrial design, i.e. depends on the nature and purpose of the product. The degree of freedom of the author, as a rule, is limited to the elements of the product, the appearance of which is due to technical and functional requirements. The list of elements of an industrial design, which form the general impression, depends on a certain degree of freedom of the author. Given that this criterion is completely new in the national legislation on the protection of rights to an industrial design and requires certain approaches to its definition, it is appropriate to review the case law of the European Union in the field of protection of design rights. The main purpose of this article is to analyze this practice to determine a degree of freedom of the author for industrial designs belonging to different type and for different purposes, as well as the impact of a certain degree of freedom of the author on the overall impression for the informed user.

Keywords: industrial design, degree of freedom of the author, individual character

Doroshenko O., Rabotiahova L. New Institute of Intellectual Property Law in Ukraine — Unregistered Industrial Design.
The article discusses the main provisions of the institution of intellectual property law — an unregistered industrial design, which was introduced into the legislation of Ukraine through the implementation of the provisions of Art. 212–217 Chapter 9 «Intellectual Property» of the Association Agreement between Ukraine, on the one hand, and the European Union, the European Atomic Energy Community and their Member States, on the other hand, and harmonization with the norms of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

The authors analyzed the main features of the legal protection of industrial designs as unregistered industrial designs, namely: without registration for a short period of time, with a limited scope of rights. The legal regulation of the protection of an unregistered industrial design in Ukraine is similar to the legal regulation of an unregistered industrial design of the Community and has the same advantages and disadvantages.

Since the Community Design Regulation came into force, one important question has always lingered: can a design which is first disclosed outside the EU territory be protected by an unregistered Community design right when it is subsequently disclosed within the EU? The UK court’s recent reference to the Court of Justice of the European Union may finally will answer this question. The same question arises in relation to an unregistered industrial design in accordance with the new legislation of Ukraine and requires further clarification in law enforcement practice.

Of equal interest is a date for assessing the novelty of a design. Is the date for assessing the novelty of a design for which unregistered Community design protection is the date on which the unregistered Community design protection for the design came into being according to the Regulation, or alternatively the date on which the relevant event of disclosure of the design could reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community, or alternatively some other, and if so, which date?

Key words: unregistered industrial design, unregistered industrial design of the Community, novelty, individual character, first made available to the public

Zaikіvskyi O., Onіstrat O. Some issues on protection of national interests concerning intellectual property in the process of Euro-Atlantic integration.
Some issues of protection of national interests concerning intellectual property in the process of Euro-Atlantic integration are considered, in particular features of protection of intellectual property in the implementation of international military-technical cooperation of Ukraine, depending on the specifics of this activity. The legislation of Ukraine regulating activities related to military-technical cooperation is analyzed. The importance of intellectual property protection at all stages of military-technical cooperation and the need to improve the legislation on the regulation of intellectual property protection in the defense sphere are outlined.

The Constitution and major legislative acts of Ukraine in the field of national security and defense have clearly defined the strategic course for achieving NATO membership. However, to achieve this strategic goal requires persistence and political will, as well as an understanding of the various tactical issues that need to be resolved along the way.

New members are being trained in the process of performing the NATO Membership Action Plan. On the long-term path of Euro-Atlantic integration, Ukraine has developed an annual NATO-Ukraine national program. Traditionally, the Annual National Program is structurally constructed by analogy with a typical Membership Action Plan and includes almost all areas of reformation and modernization of Ukraine.

In particular, great attention is paid to reforming and comprehensive support of Ukraine’s security and defense sector. It includes a wide range of measures to maintain combat capabilities, modernize and upgrade weapons and military equipment, reform and develop the defense-industrial complex of Ukraine, implement the government quality assurance system of defense products, revitalize the scientific and military-technical cooperation. Even measures to ensure gender equality in the security and defense sector of Ukraine are being envisaged.

It is stated that defense and technical cooperation with NATO will be focused, in particular, on the use of the best modern world technologies. However, the issues of intellectual property protection of all entities and protection of national interests in this field are not considered at all, although almost all the envisaged measures cannot be implemented without the use of intellectual property rights.

In our view, intellectual property issues should be decided in conjunction with other issues. However, in order to determine the position of the state and development of appropriate proposals and recommendations for securing national interests in intellectual property in the process of Euro-Atlantic integration, it is appropriate to consider these issues in the following areas:

legal cooperation between Ukraine and NATO;

scientific cooperation;

military-technical cooperation.

Keywords: intellectual property, defense sphere, defense capability, objects of intellectual property rights, intellectual property rights infringement, arms and military equipment, military-technical cooperation

Shabalin A. Scientific issues of civil legal protection of intellectual property rights.
The scientific article is devoted to the study of the legal aspects of civil protection of intellectual property rights. The basic methods of civil protection, as universal methods of protection, are revealed through the prism of protecting the violated right to the results of intellectual activity. The main attention is paid to the study of special ways to protect intellectual property rights, which are embodied in the relevant regulatory acts regulating relations in the field of intellectual property. It is indicated that the use of universal civil law methods of protecting violated intellectual property rights. as well as special protection methods, it complies with the principle of civil disposition, and also expands the possibilities of civil law protection of the corresponding right, including i intellectual property rights. In this scientific article, the author also pays attention to the issue of determining the criteria for judicial discretion in the application of defense methods that are not directly provided for by the law in the administration of justice, including in cases concerning the protection of intellectual property rights. Based on the analysis, it is proposed to amend the EIC and CPC of Ukraine to consolidate the general criteria for the application of the civil defense method by the court, it did not go to the level of law (analogy of law). The author reveals from a scientific point of view, such a method of civil protection as self-defense in the context of subjective protection of intellectual property rights. It indicates the widespread use of modern digital technologies to protect the subjective violated right to an intellectual product. This legal approach is fully correlated with existing international acts on the regulation of relations in the field of intellectual property, in particular with EU directives. This approach also finds practical support from the subjects of the infringed intellectual property rights, in particular through the use of social networks.  The author points out that modern digital technologies are increasingly playing an important role in the legal protection of private law. And mean intellectual property rights. Based on the analysis carried out in this scientific article, a theoretical definition of the legal concept was formulated, which means methods of civil protection of intellectual property rights.

Keywords: civil law protection, intellectual property law, infringement of intellectual property rights, EU

Butnik-Siverskiy О. Economic and legal prospects of activation of science parks activity on the way to neoeconomics.
The author researches and substantiates by generalizing the scientific points of view improving the legal regulation of the created science parks on the initiative of higher education institutions and / or research institutions, taking into account the economic and legal prospect of intensifying their activities. National and foreign experience of science parks activity is considered. The content of using the founding agreement on creation of a science park and the agreement on partnership of business entities with a science park is provided. Problems that have not yet been resolved in the process of creating science parks and using innovative developments are noted. The classical content of entrepreneurship in innovation is provided and considered from the standpoint of clarifying the content of the innovation structure, which is based on the commercialization of intellectual property rights by their types, which is a part of the intellectual capital cycle with a corresponding effective result. There is substantiated the procedure of formation of the statutory capital of the science park, to which higher educational institutions and / or scientific institutions cannot use intellectual property rights to the objects, created at the expense of budgetary funds, but can only under the conclusion of a license agreement with business entity, having non-state and state form of ownership as transferred assets, which does not require the alienation of the object of intellectual property rights as part of intangible assets. It is proposed to use the target budget funds as the initial start-up capital, which is provided on reverse terms to the state budget in case of closure (liquidation) of the science park by the decision of the founders or on the basis of a court decision. Alternatively, in the absence of target budget funds, it is proposed as a source of money to contribute to the statutory capital of the science park as a start-up capital to send part of the special fund of the state budget. It is justified the creation of a technology transfer office, which will be a structural unit of higher education institutions and / or research institutions, which will deal with the process of filing and reviewing a patent application and subsequent licensing. It is noted that the science park can be the founder (co-founder) of small innovative enterprises and enter into partnership agreements with them for the implementation of certain innovative projects.

Keywords: intellectual and innovation environment, science park, founding agreement, statutory capital, intellectual property rights, license agreement, legal status

Postryhan T. History of legislative regulation Innovation Park of the Swiss.
The article reveals important historical aspects of the legal regulation of the Swiss innovation park, the creation and operation of science and technology parks.  The article reveals the issue of adoption and amendment of certain legislative acts regulating the activities of the elements of the innovation structure of Switzerland.  Federal laws governing the elements of the innovation structure of Switzerland, their legal status.  The adoption of modern federal laws was preceded by a history of development and changes in the legal regulation of the innovation park in Switzerland.

The author analyzes the development of scientific research on state and legal regulation of elements of the innovation structure of the state, problems in the legal regulation of activities and trends in the further development of the innovation park in Switzerland.

The author identifies the research bodies in accordance with Swiss law.

The article states that the State Secretariat for Vocational Education and Technology, which is part of the Federal Department (Ministry) of Economics, deals with innovation policy in Switzerland. The Secretariat may delegate its powers to other government agencies and universities  The party interested in the development of the project submits project documentation to the State Secretariat for Vocational Education and Technology. Depending on the type of application, in the case of a decision to support the project, a decision may be made to delegate the project to a university or other research institution.

The author notes that in Switzerland special attention is paid to nanotechnology, engineering, chip development, agriculture and biochemistry.

The author emphasizes that one of the largest science parks is represented by the Swiss Federal Institute of Technology and characterizes the activities of this institute. The article reveals the activities of the Swiss Federal Institute of Technology for 2019, identifies the creation of branches of the institute and new companies.

Keywords: science and technology park, science, legal regulation, high technologies, innovation, legislation, associations, funds

Kashyntseva О., Trofymenko M. Intellectual property on data of COVID-19 off-label treatment and data of compassionate use of medicines and access to treatment in a pandemic.
The article concerns the issues of legal protection of data obtained as a result of off-label drugs therapy of COVID-19 and of data obtained of the compassionate use of medicines in treatment of COVID-19. The authors argue that neither data on the use of off-label or on the basis of a compassionate use in the treatment of coronavirus (data obtained in solidarity clinical trials) are not determined as the information that should be protected from unfair commercial use. Regarding to the use of off-label for a new purpose of drag it is not be considered as a «new chemical substance», because the drug is already registered, and therefore known, and in the case of obtaining data in compassionate use, this information is removed from the trade secret regime by the WHO and EMA opinion. Such information is opened to use from the beginning. Therefore, in both of the above cases, it could not be considered as an «unfair use» in the meaning of Art. 39 TRIPS Agreements.

The WHO apply to the world community and informed about the «Solidarity» clinical trial for COVID-19 treatments». Solidified clinical trials of COVID-19 treatment compare four treatment options to evaluate their efficacy in COVID-19 therapy. Solidarity-based clinical trials aim to quickly identify which of the drugs tested slows disease progression or improves survival. New drugs can be added to solidarity studies based on new data.

On April 3, 2020, the Committee for Medicinal Products for Human Use of European Medicines Agency (EMA) issued recommendations for compassionate use for remdesivir as the most promising treatment for COVID-19. The EMA explicitly states that the compassionate use is not part of the clinical trial in its usual meanings.

IFLA (International Federation of Library Associations and Institutions) also wrote an open letter to WIPO urging WIPO to use all available flexible intellectual property mechanisms to maximize worldwide access to information (research data) on COVID-19 treatment.

Thus, the legal regime of «Solidarity clinical trials and the WHO and EMA declarations lead us to conclude that all data obtained in the Solidarity clinical trials should not be monopolized by intellectual property, either as objects of patenting for a new scope / new purpose of treatment, or like an object of data exclusivity protection.

Keywords: intellectual property, access to treatment, compassionate use of medicines, off-label treatment, access to treatment