Download Journal № 5 (109) 2019

Anna Shtefan. Copyright exceptions and limitations in the EU-Ukraine  Association Agreement


С. 5-14

The article deals with the analysis of copyright exceptions and limitations in the EU Ukraine
Association Agreement and the procedure for their application. The principles of
the free use of works are analyzed; an explanation of how to separate the provisions of the
Association Agreement that are directly applicable and not directly applicable is given.
The limitations on the fixation right, broadcasting and communication to the public, distribution
right, reproduction right and exceptions related to computer programmes and
databases are investigated. Conclusions on provisions of the Association Agreement which
should be implemented into domestic law have been made.

Keywords: copyright exceptions and limitations, free use of works, Association Agreement

Kostiantyn Zerov. Right of reproduction and right of making available to the public in the EU-Ukraine Association Agreement


С. 15-29

The article deals with the analysis of two specific exclusive economic rights: the right
of reproduction and the right of making available of works to the public in such a way that
members of the public may access these works from a place and at a time individually chosen
by them and compares them under the domestic Ukrainian legislation and under the
EU-Ukraine Association agreement. The concepts of «reproduction» and of «communication
to the public» are considered.
It is concluded that the right of reproduction is the most basic right since it forms the
basis of most forms of exploitation of a work. Reproduction is, in reality, the copying of a
work in any manner or form. At the same time, it remains uncertain in Ukraine at the legislative
level that the right to reproduction of work includes direct or indirect reproduction
and reproduction in whole or in part. These issues are up to the court to decide.
It is concluded that the approach when the right of making available of works to the
public is included in the broader «right of communication to the public» is applied in the
EU Member States (Articles 3 and 4 of Directive 2001/29 /EC) and is reflected in Art. 174
Association Agreement. In addition, the concept of communication to the public in the EU
must be construed broadly, as referring to any transmission of the protected works, irrespective
of the technical means or process used, this concept includes two cumulative criteria,
namely, an ‘act of communication’ of a work and the communication of that work to
a ‘public’. This approach should be implemented in the Ukrainian legislation.

Keywords: reproduction, communication to the public, making available, Association

Sudakov V. Collision solutions exception of exclusive property rights on copyright object, which is created at the order of the employer


С. 30-38

The article addresses the problematic issues of the occurrence of property rights to a copyrighted object created by the employer (a work-for-hire).
At this time, there are significant differences in the legal regulation of the occurrence of property rights of the employee who produced the work in accordance with the Civil Code of Ukraine and the special Law of Ukraine «On Copyright and Related Rights».
On August 16, 2001, amendments to the Law of Ukraine «On Copyright and Related Rights» came into force, which resulted in the property rights of the employee to work, only if it was regulated by a separate contract with the employer. In such a case, the employee was only entitled to monetary compensation for the production of such work.
However, he did not have the right to exercise such property rights as exclusive property rights to use the work and to permit or prohibit the use of the work by others.
However, the Civil Code of Ukraine came into force on January 1, 2004, Art. 429 which stated otherwise, in comparison with the law, the property rights of the employee and the employer for a work of work are common, unless otherwise regulated by the contract. In other words, such an employee acquired the rights of the co-owner of the intellectual property object along with the employer.
Particular attention is paid to justifying the resolution of this conflict in the light of the Association Agreement between Ukraine, on the one hand, and the European Union, the European Atomic Energy Community and their Member States, Art. 181 which separately regulates the order of occurrence of the employee’s property rights to the computer program made by him, contrary to the requirements of Article 429 of the Civil Code of Ukraine in favor of Article 16 of the Law of Ukraine «On Copyright and Related Rights».
The results of the study suggested ways to resolve the conflict, outlined the need for legislative changes, and suggested specific texts of bills to address the contradictions between these regulations.
Key words: copyright, property rights, royalties, work-for-hire, computer program

Kovalenko T. Commercial (firm) name as a means of individualization


С. 39-43

A commercial designation along with the trade name is usually attributed to the means of individualization of the participants of economic turnover. The fundamental rules of protection and use of commercial (firm) names are reflected in commercial, civil and other codes, the trade legislation, unfair competition prevention laws and so forth.
The means of individualization are designed to distinguish both the producers and goods and services of one producer from the homogeneous goods and services of another producer. Therefore, a indispensable prerequisite for the protection of the means of individualization is the correct consolidation of rights. Otherwise, company, firm etc becomes vulnerable and can be seriously affected by the actions of unscrupulous competitors.
Each commercial organization, that is, an organization with the intention of its activities to make a profit, tries to distinguish its products from many similar products, providing it with unusual packaging, shape, special qualities, conducting advertising campaigns, exhibitions, fairs and so on. At the same time, a legal or natural person holds itself out in a certain sector of the market, by acquiring a
business reputation, by concluding long-term agreement, in other words, individualizing itself as a participant to a civil transaction. Mere commercial (firm) name, as a means of individualization, comes first.
A commercial (firm) name is the individualizing name of legal entities and individual entrepreneurs and by which industrial or commercial activity is carried out. A commercial (firm) name is a means of identification of the person and its activity and is used in transactions, on signages, in announcements, in documentation, in advertising and so forth. Collision of similar means of individualization occur more often. Certainly, much of these conflicts arises unintentionally. However, a significant number of disputes occupy, where one of the parties intentionally caused uses other people’s means of individualization, trying to increase their competitive advantages.
The aim of this article is to consider the issues of positioning of a legal entity or a natural person in a certain sector of the market, the acquisition of business reputation, that is, individualizing itself as a participant of civil transaction.
Keywords: commercial name, firm name, means of individualization, company name

Zaikіvskyi O., Onіstrat O. Algorithm and criteria for selection of inventions in the sphere of national security and defense


С. 44-52

The importance of intellectual
property in the development of weapons and military equipment is considered. The creation of systems and models of weapons and military equipment is performed using a large number of different intellectual property rights, especially inventions. In such circumstances, intellectual property objects, in particular inventions and technologies based on them, which determine the new quality of weapons and military equipment, can generate significant profits for the enterprise when used and affect national security and defense, must be under close state control.
Some of them may be very important for national security and defense, that is, socially necessary and, therefore, they can be alienable. However, there is no decision at the state level: whether intellectual property rights are needed. If such rights are needed, which ones and how to select them. Therefore,
there are many about intellectual property in the field of intellectual property. These issues are crucial when used in armaments and military technology or in other areas of national security. The legal regulation of the distribution of property rights of participants in the process of development of weapons and military equipment — authors of objects related to services, intellectual property rights, their employers (enterprises of the defense-industrial complex, the state on behalf of state customers) is not clearly defined and not defined.
Another problem is that the law does not explicitly specify the mechanism for the forced alienation of private property objects, which include intellectual property rights.
In order to develop it, it is necessary to first consider the possible algorithm for justifying the list of inventions and the need for their extraction in the interests of national security and defense, as well as to determine the criteria by which the selection will be made.
The criteria for substantiating the list of inventions and the need for their removal are specific, which is determined at first by the main purpose and features of the process of creating systems and samples of weapons and military equipment.
Expert assessment methods for the selection of inventions that may be relevant to national security are discussed. An algorithm and criteria for the selection of inventions that can significantly affect the field of national security and defense are proposed.
Key words: intellectual property, inventions, sphere of national security and defense, objects of  intellectual property rights, armaments and military equipment, patents for inventions, international patent classification

Kompanets Ye. Protection of rights to geographical indication in criminal proceedings in Ukraine: reality and ways of imporvement


С. 53-68

The article focuses on study of protection of rights to geographical indication in criminal proceedings.
Geographical indications occupy a special place in the system of intellectual property rights and because of their peculiarities are important for business as tools of identification, consumer attention and promotion of goods.
The current level of protection of intellectual property rights to geographical indications in Ukraine indicates the need for fundamental legislation changes in this sphere. Special attention requires the fact that the level of protection of intellectual property rights to geographical indications in criminal proceedings in Ukraine is untenable and requires changes. These factors determines the relevance of the article. On the basis of analysis of national legislation and norms of international law the contradictory and problematic issues of protection of rights to geographical indication have been revealed. In order to ensure effectiveness of protection, the following was proposed: to harmonize Ukrainian legislation with EU norms of law with regard to terminology, ways of use of geographical indication (storage for the purpose of sale, sale,exportation, importation, use in domain names) and bodies of protection (the state represented by authorized bodies). The propositions regarding improvement of mechanism
of protection in the field-specific law, Criminal and Criminal Procedure Codes of Ukraine (severing infringement into separate body of a crime, classifying a crime as public prosecution) have been formulated. On the basis of the conducted analysis of infringement of rights to geographical indication as socially dangerous act the version of Art. 229-1 of the Criminal Code of Ukraine «Infringement of rights to geographical indication» was suggested for discussion. The suggested Article differs from other Articles of the Criminal Code of Ukraine, which envisage responsibility for infringement of intellectual property rights, by new approach to its statutory concept, in particular by introducing a formal body of a crime for unlawful manufacture of goods with infringement of rights to geographical indication.
Key words: geographical indication, criminal proceedings, protection of rights, intellectual property

Zhikharev O. An analysis of a technical result of an invention (utility model) in matter of forensic expertise of intellectual property


С. 69-77

A technical result is a category that is used as part of study many issues of forensic expertise of inventions and utility models. In the first part of the article, an analysis is made of cases when the technical result should be considered in order to answer the questions raised before a forensic
expert. In the second part of the article, an analysis is made of cases when the technical
result as such is not indicated directly in a description of an invention (utility model) that
is provided for the study. This is especially true for patent descriptions issued at applications from foreign countries, the legislation of which does not require the applicant to indicate a technical result. As a rule, in such applications only a problem of invention is indicated, the solution of which is directed to a technical solution. However, «problem» and «technical result» are different categories in accordance with the Ukrainian Law «On Protection of Rights to Inventions and Utility Models». Therefore, when conducting a forensic expertise, a problem may arise when the forensic expert himself determines the
technical result as a separate category. Such a determination is possible based on the problem of an invention (utility model) and other information from the description. This article describes possible cases of a study of an invention (utility model) in the absence of an indication of a technical result in matter of forensic expertise of intellectual property.
The determination of the technical result is possible on the basis of the special information from a description: about a summary of invention (utility model) or about a prior art and its critique or about advantages of invention (utility model) etc. The article contains an analysis of requirements and recommendations regarding a technical result in accordance with the Methodology for forensic examination related inventions and useful models (universal) of the Ministry of Justice of Ukraine, the Law of Ukraine «On Protection of Rights to Inventions and Utility Models», the Law of Ukraine «On Forensic Expertise», the Methodological Recommendations on specific issues of examination of an application for an invention (utility model) and other subordinate law and the relevant publications.
Keywords: forensic expertise, invention, utility model, technical result, technical problem, requirements of patentability

Minchenko N., Samolovova N. Mediation: international and national experience


С. 78-84

In this article, the authors intend to explore the advantage of the mediation process, to explain the main features and benefits of mediation.
Intellectual property mediation is one of the varieties of alternative dispute resolution with the participation of a neutral, disinterested third party to the conflict — a mediator who helps the parties to reach a certain dispute settlement. The mediator should have maximum knowledge and a strong desire to reconcile the parties. At the same time, the parties fully control the decision-making process and the terms of resolution of the conflict. Mediation is a kind of a dispute resolution. The role of the mediator is more complex than the role of the court or judge. The mediator should help the parties to the dispute to
find a solution to the issue under consideration. The mediator has to help the parties to resolve the subject-matter of dispute and by his actions contributes to the adoption of a voluntary correct decision between the parties, facilitates the process of mutual communication, understanding of positions and interests, focuses the parties on their interests and seeks a productive solution to the problem, enabling the parties to reach agreement.
Other than litigation process, when a neutral third party (as a general principle — a judge) imposes a decision on the matter under consideration, the parties and their mediator tend to control the mediation process by deciding next items:
• when and where the mediation process will take place;
• who will attend;
• how the mediation process will be paid;
• how the mediator will interact with the parties.
In recent years the commercial world has shown a strong interest in the mediation process. This interest is due, in part, to the dissatisfaction of the parties with the cost and duration of some of the litigation and the outcome of settlement of disputes during the court hearings. Experience has shown that the mediation process often leads to a result, acceptable to both parties to the dispute.
Research of international and national practice permit the conclusion on the progressiveness of the mediation institute in the area of intellectual property regarding to other alternative forms of dispute settlement and the necessity to implement them in Ukraine at the legislative level.
Keywords: mediation, intellectual property, international experience, dispute settlement, benefits of mediation, mediation process

Butnik-Siverskiy O. The state and problems of the development of taxation of intellectual property operations


С. 85-96

The article summarizes from a scientific point of view the state and economic nature of changes in taxation of operations in the innovation-intellectual economy with objects of intellectual property rights (IPR) taking into account the processes that are followed in the European Union (EU). The author considers in detail the content and classification of IPRs that are included into intangible assets.
Emphasis is placed on conducting the operations with IPRs, linking with the implementation of the relevant state tax policy through the Tax Code of Ukraine, which regulates the relations arising in the field of tax and fees collection. The author systematically considers the dynamics of changes in the tax system of Ukraine in the direction of adjustment (increase or decrease) of the financial result before the taxation (profit or loss), determined in the financial statements of the enterprise on the difference in accordance with national provisions (standards) of accounting or international standards of financial
reporting. The article considers the value added tax taxation of operations with IPRs under a license agreement when paying royalties as double taxation. Attention is paid to changing the tax base, taking into account the various constraints on the content and amount of costs that are defined in accounting system, with the disclosure of the generalization of approaches of different countries to the profit taxation of corporations. The author analyzes tax rates of separate taxes, expressed in absolute units, that are characterized by greater volatility, and researches the growth of hryvnia equivalents in hard currencies of tax rates due to the devaluation of hryvnia, which leads to a nominal increase
in state budget revenues. Attention is drawn to the fact that there are not fully taken into account the specifics of tax regulators of creation, acquisition and use of IPRs and the transfer of technologies that require the harmonization of financial, tax and accounting legislation in Ukraine with the application of EU common approaches to taxation of profit by amending the legal acts regarding their realization.
Keywords: objects of intellectual property rights, tax policy, tax base, accounting, commercialization of intellectual property

Ponomarova O. Some aspects of intellectualproperty rights in medicine in the context of European integration processes


С. 97-103

The aim of the article is to analyze the objects of patent law in the field of medicine in the context of European integration processes. The field of medicine is quite speculative, it is about the life and health of people. As technology in the field of medicine improves, intellectual property rights become
the privilege of medical companies, and technical organizations, etc. That is, we are talking about the fact that patents in our country are issued for everything. Today we see that the policy of medical and pharmaceutical companies, according to the existing legal system in Ukraine, receives patents for inventions (utility models) and thus monopolizes the medical market, which in turn leads to a limitation of people to affordable drugs or available treatment services (patent for the method).
The current state of the system of legal protection of inventions and utility models in Ukraine (patent system) is characterized by some problems. The legislation of Ukraine does not distinguish between objects covered by legal protection as inventions and utility models. In this regard, it is argued that securing the possibility of dual protection (patenting) of the same object as the invention or as a utility model leads to a large number of patents that duplicate each other, has negative consequences for the realization of human rights in field of medicine.
In this regard, we propose to bring the legislation of Ukraine into line with the European legislation by amending the Law of Ukraine «On Protection of Rights to Inventions and Utility Models» in Art. 6 «Legal Protection Conditions» are provisions that exclude medicinal products from among patentable utility models. At present, Ukrainian legislation allows the registration of a medicinal product on a utility model, which is inadmissible in the medical field. Such an opportunity creates favorable conditions for
patent holders to monopolize the market and not to lower drug prices. Such legal protection of inventions is «evergreen patents» — patents whose holders artificially extend its exclusive rights to the active substance by providing protection to the additional properties of the active substance and methods of treatment.
As for the industrial design, Article 5 of the Law of Ukraine «On Protection of Industrial Design Rights» provides legal protection for the industrial design, which does not contradict the public order, the principles of humanity and morality and meets the conditions of patentability. An object of an industrial design may be the shape, drawing or coloring, or a combination thereof, which determine the  ppearance of the industrial product and are intended to meet aesthetic and ergonomic needs.
We would like to draw attention to the fact that such industrial design patents as rubber stoppers are patent trolling and are an example of unfair use of intellectual property rights.
Therefore, it is necessary to harmonize the patent legislation of Ukraine with the European Patent Convention.
Keywords: objects of intellectual property rights, medicine, European integration

Paduchak O. Popularization of knowledgein the sphere of intellectual property: when, how and why would we do it?


С. 104-110

In the article the issue on popularization of knowledge in the sphere of intellectual property in the educational establishments is examined.
As of today, the system of general secondary and professional education does not provide for systematic measures on popularization of knowledge on intellectual property. Economic and jurisprudential subjects as well as elective courses in the school have substantial potential for the popularization and providing children with knowledge on the basics of intellectual property which, unfortunately, is not yet exploited.
The specialty «Intellectual Property» relates to such fields of knowledge as «Management and Administration» and «Law». Not that many chairs on intellectual property try to popularize knowledge on intellectual property and to attract more students to acquire this knowledge. In view of the complexity and interdisciplinary of the mentioned specialty there is a problem of insufficient informational work on the relevance and the practical need for the professionals of this qualification in the sphere of intellectual property education. The existing problematic issues and proposed ways of their solving are addressed in an integrated manner with consideration of international experience. In particular, the example of the Republic of Korea was considered in detail where the popularization of knowledge on intellectual property begins at childhood. Raise awareness among students (elementary school, middle school and high school) on copyright through the experience-oriented program within the school curriculum (e.g. extracurricular activities or creative discretional activities). Teachers in charge will receive training in advance and acquaint themselves with copyright concept and educational
methodology. Training programs are designed to meet the needs of young people and are formed from the consideration and analysis of cases found in everyday life. Ukraine needs to unite as many participants as possible to develop and further implement the National IP Strategy, a separate block of which envisages the formation of a high level of culture and education in the sphere of intellectual property. To nurture respect for intellectual property rights from childhood, to encourage young children of primary school age to learn about this extremely interesting and useful sphere, to create the conditions for the development of children’s intellectual abilities, children’s invention, using international experience and cooperation.
Key words: Education, school, intellectual property sphere, popularization of knowledge on intellectual property, World Intellectual Property Organization (WIPO), National Intellectual Property Office (NIPO)

Nosik Y. Embroidery: cultural heritage and intellectual property


С. 111-119

The article is focused on studying the legal regime of the objects of intellectual property law created by embroidery, overviewing the main legal issues arising in the practice of the craft under the conditions of developing computer tech and information technologies, and on researching the principles of civil law, which constitute the foundations of regulation of the relations in the field.
Embroidery is one of the crafts, which displays and expresses the intangible cultural heritage, which is organically connected to the material cultural and natural heritage of the Ukrainian people.
When applying the embroidery technique to create the visual images a person displays the freedom of creativity, which constitutes one of the most important principles of the intellectual property law and, at the same time, is one the human rights, guaranteed by the Constitution of Ukraine.
From the standpoints of the legal protection of the results of the intellectual activities,
one can affirm, that the objects, created with the embroidery, can receive protection in intellectual property law by the means of copyright, trademarks, industrial designs and geographical indications. As the result, the regulation of social relations, connected to such objects, is being based on the specific principles of the intellectual property law.
The author comes to the conclusion that in the national legislation of Ukraine and in international law there can be observed two directions of realization of the legal policies in regards to such a craft and industry as the embroidery. The first direction is protecting embroidery as the manifestation of the intangible cultural heritage. It mainly rests in the realm of public law. The second direction, which is clearly the domain of private law, is the legal protection of the results of the intellectual and creative human activities, which are being materialized with the techniques of embroidery and securing the right to freedom of expression by the means of art.
In addition, in the realities of Ukraine, significant prospects for the development of legal protection of intellectual property remain in the direction of protection of geographical indications — in this part, the field for further scientific research remains open.
Protection of the geographical indications of the products of the embroidery craft is a prospective direction of the evolution of the system of intellectual property in the field, particularly in the view of the renovated national legislation on GIs.
Keywords: Embroidery, intangible cultural heritage, derivative work, principles of civil law, basic foundations of intellectual property law

№ 5 (109) 2019