STATE SECRET AS OBJECT OF INTELECTUAL PROPERTY RIGHT

S. Fil, scientist
Organizational Department of
State Research Institute
of MIA of Ukraine

STATE SECRET AS OBJECT OF INTELECTUAL PROPERTY RIGHT

Paper deals with the issue of legal protection of state secrets as intellectual property rights and the analysis procedures for acquiring property rights for secret inventions (useful models) and their defense, which is set by the current legislation of Ukraine.

Keywords: secret invention (utility model), state secret, patent, intellectual property.

Information acknowledged as state secret covers data in the sphere of defense, economy, science and techniques, international relations, state security and protection of legal order, which disclosure may harm national security of Ukraine [1, Art. 8]. The Law of Ukraine “On State Secret” regulates public relations, concerned with referring of information to state secret, classifying and declassifying of its material media and protection of state secret with the purpose of protection of national security of Ukraine [1].

Improper state secret protection leads to a significant increase in the vulnerability of classified information that is collected, stored and processed in each state, which inevitably leads to increased threats to the national, social and individual security, reduces national defense capability, slows down economic and industrial growth, lessens scientific and intellectual potential. As a result, the influence of other countries on the formation of domestic and foreign policy becomes more significant; increases the risk of accidents and ecological catastrophes because of unapproved interference in functioning of automated control systems; worsens the crime situation, etc.

Objects of inelectual property may be referred to state secret on assumption that they contain infofrmation acknowledged as state secret according to the Law of Ukraine “On State Secret” [1].

It is possible in course of duty to use state secrets to create subordinate objects of intellectual property, including invention, utility model, industrial design, know-how, layout of integrated circuit, improvement suggestion in industrial operations, and computer programmes, databasses, scientific and literary works that are covered by copyright. Despite such a broad list of possible objects of inelectual property, according to the current legislation of Ukraine, namely the Law of Ukraine “On the Protection of Rights in Inventions and Utility Models”, only the authors of inventions and utility models shall be afforded the exclusive right to exploit their inventions at their own discretion [2].

However, there are closed literary funds in Ukraine. Scientific and literary works that contain state secret are of limited access for reasons of confidentiality and security, but the Law of Ukraine “On Copyright and Related Rights” does not provide for protection of the author’s intelectual property rights [3], which would be requisite, though.

The results of intellectual activity in any field of technology that contains information considered to be of a state secrecy are protected by a patent for a secret invention (utility model) [2, Art. 1].

Acquisition of proprietary and non-proprietary rights on an invention (utility model) is regulated by the specialized legislation on intellectual property.

The peculiarity of the legal protection of the right to a secret invention (utility model) is the need for simultaneous consideration of applicable laws of Ukraine on state secret and on protection of intellectual property rights. In such circumstances, there may be contradictions in the acquisition and subsequent protection by the state of intellectual property rights to a secret invention (utility model).

This article is aimed at analysis of legal acts of Ukraine and doctrinal studies on the legal protection of state secrets as an object of intellectual property rights, research of procedures of acquisition of proprietary rights to secret invention (utility model) and their protection.

The issue of legal protection of state secret as an object of intellectual property right has been studied by L. I. Rabotyagov, O. Parkhomenko, L. Glukhivskyi, G. O. Androshchuk, O. D. Butnik-Severskyi, Ye. Sh. Hareyev, I. Yu. Kozharska, T. V. Jaroshevska, N. O. Khalayim, Yu. Osipova and others. They explored the issues of legal protection of secret inventions (utility models), terms of remuneration for classifying the invention, terms of remuneration for creation and exploitation of the service invention provided the contract between employer and employee, and in the absence of such contract, estimation of remuneration for creation and exploitation of objects of intelectual property right etc.

Our research of legal protection of state secret as an object of intellectual property right and procedure of acquisition of proprietary rights to secret inventions (utility models) and their protection involved the analysis of national legislation on the legal protection of secret invention (utility model), including the Law of Ukraine "On State Secret" [1, Art. 1, 6-38], the Civil Code of Ukraine [4, Art. 459-470], the Law of Ukraine "On Protection of Rights to Inventions and Utility Models" [2, Art. 1, 12, 16, 22, 27-32], the Order of the Ministry of Education and Science of Ukraine "On approval of rules and drafting application for invention and utility model applications" [5], the Order of the Ministry of Education and Science of Ukraine "On Approval of the State Register of patents and declarative patents of Ukraine for secret inventions" [6], ISO 3575-97 “Patent Research. Key provisions and procedures” [7], ISO 3574-97 “Patent form. Guidelines. Drawing up and design "[8] and other departmental regulations.

The above regulations provide for a certain sequence of actions that govern the procedures of acquisition and protection of property right to secret invention (utility model), which may be defined as follows:

• setting the scope of legal protection of secret invention (utility model) as an object of intellectual property;
• establishing the patentability of secret invention (utility model);
• filing an application for secret patent granting;
• submission of documents for secret patent granting and their registration at the Patent office;
• realization of rights deriving from a patent for a secret invention.

Scope of legal protection of secret invention (utility model) as an object of intellectual property. According to the Law of Ukraine “On State Secret” state secret includes information in the sphere of economy, science and technology on scientific research, research-construction and design works, on which basis it is possible to create progressive technologies, new types of production process, products and technological processes, which have important defense and economic value or sufficiently influence foreign economic activity and national security of Ukraine [1, Art. 8]. All scientific and technical products created during secret research and design works is the result of creative intellectual activity of the person whose rights are protected by Intellectual Property Institute.

State expert on secrets performs referring of information to state secret. Decision of state expert on secrets should include information, which may be a state secret; reasons for referring of information to state secret and substantiation of loss to national security of Ukraine in case of its disclosure; secrecy rate of mentioned information; volume of financing of measures, necessary for protection of such information; governmental body, local authority, enterprise, establishment, organization or citizen, who has made a proposal to refer information to state secret, and governmental body (bodies), which is granted with the right to determine the circle of subject, which will have access to this information; term, within which decision on referring of information to state secret is in effect. Decision of state expert on secrets on referring of information to state secret is to be registered by Security service of Ukraine at Summary of data, which constitute state secret. Order of register of decisions of state experts on secret is determined by the Cabinet of Ministers of Ukraine [1, Art. 9-13].

All correspondence between managers and performers of secret research and design works, during which new samples of scientific and technical products are created, inventors of secret inventions (utility models), who wish to obtain a patent, and the state expert shall be carried out through the relevant division, responsible for keeping secrecy.

The exclusive authorship and property rights in a secret invention (utility model) shall be certified by the patent granted by the Institution (the State system of the legal protection of intellectual property in Ukraine) on the basis of application filed to the State Enterprise “Ukrainian Institute of Industrial Property” (hereinafter the UPTO) [2, Art.1].

The subject matter of an invention (utility model) may be constituted by a product (device, substance, strain of microorganism, plant or animal cell culture, etc.); a process; or use of already known product or process for a new purpose. Plant and animal varieties, biological processes of plants’ and animals’ reproduction, topographies of integrated circuits and results of an artistic design may not constitute the subject matter of an invention (utility model) [2, Art. 6].

The validity term of a patent for an invention shall be 20 years. The validity term of a patent for a utility model shall be 10 years. The validity term of a patent for a secret invention (utility model) depends on the term of keeping them secret but in any case it shall be no more that the term of the protection of right in invention (utility model) [2, Art. 6].

The term of keeping a secret invention (utility model) secret depends on the term of validity of the decision of reference of information to state secret, registered by the by Security service of Ukraine at Summary of data, which constitute state secret. The shall be determined by the state expert on matters of secrets taking into consideration classification level of information, definition criteria of which shall be determined by the Security Service of Ukraine. It cannot exceed 30 years for information with classification level “top secret”, 10 years for “secret” information and 5 years for “confidential” information [1, Art. 11-13].

The peculiarity of applying for a patent for a secret invention (utility model), which is not related to the procedure of classifying/ declassifying of invention (utility model) by the state expert on state secrets is that it can be an employee’s invention. Ensuring of protection of state secret according to requirements of security standards in state authorities, authorities of local self-government, enterprises, facilities and organizations, which activity is related to state secret, shall be assigned to heads of the specified bodies, enterprises, facilities and organizations [1, Art. 5].

Employee’s invention (utility model) ” means an invention created by an employee: in the course of his official duties or of a specific task entrusted to him by his employer, unless otherwise stipulated in the work agreement (contract) [2, Art.1].

Creating of an employee’s invention has a number of peculiarities. First, not all employees-inventors sign with the employer the work agreement (contract) that clearly express who shall the property right in an intellectual property belong to, circumstances in which remuneration is payable and the amount of compensation for creation and exploitation of the employee’s invention.

According to the Article 9 of the Law of Ukraine “On the Protection of Rights in Inventions and Utility Models”, the right to a patent for an employee’s invention (utility model) shall belong to the employer of the inventor. The employer shall be required, within four months as from the date of receipt of such information from the inventor, to file a patent application with the UPTO, or to assign the right to a patent to another person, or to decide on keep the employee’s invention (utility model) undisclosed as confidential information. The employer shall be requested, within the same term, to conclude a written agreement with the inventor on amount and conditions of payment to him (his successor in title) remuneration related to the economic value of the invention (utility model) and/or any other benefit the employer obtains from this [2, Art. 9].

In her scientific research N. A. Khalayim studied the issue of keeping the employee’s invention undisclosed as confidential information. She concluded that in case when the employer decides to keep the invention undisclosed as confidential information, the commercial classified information, in contrast to the invention that is the result of creative activity, is is not just some ideal object and the result of creativity [9, p. 12].

There are two types of remuneration paid by the employer to the inventor: for the creation of an employee’s invention and for its exploitation. Remuneration shall be paid to the employee in accordance with the contract between the employer and the employee-inventor as a single (lump sum) payment, royalties from the sale of the license (royalty) or combined payments. The amount and order of remuneration payment shall be expressively determined by the contract [2, Art. 9]. The latter condition means that signing of the contract is the necessary condition for remuneration payment.

Remuneration shall be paid to the inventor in addition to the basic salary. O. B. Butnik-Siverskyi and I. Yu. Kozharska state that according to the contract inventors get the basic salary and, as an incentive, may receive the additional payment (bonuses) for exploitation of an invention with the features of an employee’s invention [10, p.29-34].

Patentability of a secret invention (utility model). To receive a patent, an inventor shall apply to a special expert of the relevant specialization to determine whether an invention satisfies the patentability requirements.

According to the Article 7 of the Law of Ukraine “On the Protection of Rights in Inventions and Utility Models”, an invention shall be patentable if it is new, involves an inventive step and is susceptible of industrial application; a utility model shall be patentable if it is new and is susceptible of industrial application. An invention (utility model) shall be considered to be new if it does not form a part of the state of the art. The state of the art shell be held to comprise everything discovered anywhere in the world prior to the date on which the application is filed with UPTO. An invention shall involve an inventive step if it is not obvious to a person skilled in the art that is not clearly resulting from the state of the art. An invention (utility model) shall be considered susceptible of industrial application if it can be used in industry or in any other sector of activity [2, Art. 7].

For the creation of a competitive scientific and technological product it is necessary to conduct continuous search and analysis of information on patents [7]. Continuous research of scientific and technical information on patents from all over the world implies definition of the level and trends of technical product development, patentability and competitiveness in global market.

In Ukraine, the patent research is conducted according to the State Standard “Patent Research. Key provisions and procedures” GOST 3575-97. The requirements of the Standard are mandatory for business entities which activity in Ukraine is fully or partially funded by the State [7].

The results of the patent research shall be set forth in a report, which materials will be used to create progressive technologies, new types of production process, products and technological processes.

The main sources of publicly available information on patents in Ukraine are the official patent journal "Industrial Property", the Property Patent Database of the UPTO and library of the Ukrainian Institute of Scientific, Technical and Economic Information.

The official patent journal “Industrial Property” contains abstracts on inventions (utility models) that provide rather rough information outlooks on them.

Since 2007, the State Intellectual Property Service of Ukraine has provided free access to a specialized database "Inventions (Utility Models) in Ukraine" [11], containing information on references, abstracts, claims and patent descriptions.

To date, the employers of the UPTO have compiled the Property Patent Database of secret inventions and utility models that can be used in course of carrying out the secret research on products and technological processes. Access to the database is granted only to the state experts on secrets of the UPTO. To conduct such secret research the employer and employee shall have access to state secret, permission from the state expert on secrets of the UPTO and permission from the owner of the patent.

Application procedure for granting a patent for an invention. An application for a patent for an invention shall be filed under the Law of Ukraine “On the Protection of Rights in Inventions and Utility Models” [2] and the Order of the Ministry of Education and Science of Ukraine "On approval of rules and drafting application for invention and utility model applications" [5].

Requirements to the main application documents (a request for grant of a patent, a description of an inention, claims, drawings and an abstract) are the same for all types of patents (including a patent for a secret invention (utility model)).

The description of the invention (utility model) shall disclose the subject matter of the invention (utility model) [5, p. 6] in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art. Conventionally, the description is divided into several sections: index specifying the category of the current edition of the International Patent Classification to which the invention (utility model) is attributed, title of the invention, sphere of the invention (utility model), prior art, subject matter of the invention (utility model), a list of drawings (if referenced to in the description), information proving the possibility of carrying out the invention (utility model).

The scope of legal protection is determined by the claim of the invention (utility model) [5, p.7]. The claims shall define the subject matter of the invention (utility model), be supported by the description and drafted in a prescribed manner with clarity and concision.

Drawings or graphics shall be drawn up on a separate sheet of paper, on the top right corner of which the title of the invention (utility model) shall be indicated [5, p. 8].

The abstract shall have an informative value only and present a concise summary of the description of the invention (utility model) [5, p. 9]. It includes the title of the invention, sphere of the invention (utility model), characteristics of the subject matter of the invention (utility model) specifying the technical result to be achieved.

Procedure for grant of patent from filing of application to official registration of patent in Patent Office. Application for a patent of Ukraine for secret invention (utility model) shall be filed in the Ukrainian language to the UPTO in two copies through the relevant division, responsible for keeping secrecy. The applicant shall be requested to attach to the application a suggestion on attribution of his invention (utility model) to that considered being of State secrecy referring to the relevant provisions of the Law of Ukraine “On State Secret” [1; 2, Art. 2].

Filing of an application to the UPTO shall subject to payment a charge. The amount and terms of payment shall be determined by the Cabinet of Ministers of Ukraine [12].

After registration of application in the UPTO an Official expert in matters concerning secrecy shall carry out a previous consideration of the invention to make decision on attribution of the invention (utility model) to that considered being of State secrecy. The Official expert shall be requested to send to the UPTO, within a month following by the date of receipt of the documents concerned to the application, his decision on the application together with the documents of it [2, Art. 16].

The Official expert shall be requested to establish a duration term of the decision on attribution of information presented in the application to that considered being of State secrecy taking into account a level of secrecy of the information [2, Art. 16].

Where the Official expert has decided on attribution of the invention (utility model), with regard to that an application has been filed, to ones considered being of State secrecy, he shall be requested to determine a group of persons authorized to have access to it, and the complete following examination of the application by the Institution must be carried out in a secrecy keeping manner. The UPTO shall notify the applicant on the decision of the Official expert within a period of one month [2, Art. 16].

Registration of a secret patent for an invention (utility model) shall be carried out in accordance with the State Register of patents and declarative patents of Ukraine for secret inventions, approved by the Ministry of Education and Science of Ukraine [6]. The Register defines the form of the State Register of patents for secret inventions (utility models), the order of reference, the procedure for granting patents of Ukraine for secret inventions and their duplicates, and the rules for keeping it.

The patentee shall have the right to get acquainted with the registration of his secret patent in the State Register of patents for secret inventions (utility models) in accordance with the Law of Ukraine “On State Secret” [1; 2, Art. 22].

Rights deriving from a patent for a secret invention.

The rights deriving from a patent for a secret invention (utility model) shall have effect as from the date of entering of the data to the State Register of patents for secret inventions (utility models) [2, Art. 28].

Unfortunately, the exclusive right afforded to the owner of the patent for a secret invention (utility model) shall be restricted by the Law of Ukraine “On State Secret” and corresponding decisions of an Official expert [1; 2, Art. 28].

An owner of a patent for a secret invention (utility model) shall have the right to give authorization (or grant a license) to any person to exploit the invention (utility model) under a licensing contract, subject to authorization of an Official expert [2, Art. 28].

Restriction on the exploitation by the owner of a secret patent depends on the term of validity of the decision on reference of the invention (utility model) to secret information. Revision of the level of secrecy of an invention (utility model) or take the secrecy off it shall be carried out upon the decision of the Official expert involved on the request of the patentee with regard to expiration of the validity term of the decision on attribution of information concerning the invention (utility model) to that considered being of State secrecy or on the basis of the court decision [2, Art. 27].

An owner of the patent for a secret invention (utility model) shall be entitled to receive financial compensation, for covering expenses for payment of charges prescribed by the Laws of Ukraine. Disputes concerning an amount and conditions of the financial compensation to the patentee shall be heard at the court [2, Art. 28].

However, financial compensation provided by the state for covering expenses for payment of charges for application or maintenance of a patent is not sufficient for an owner of the patent. After investigation of the issue, L. I Rabotyagov and A. Parkhomenko proposed to pay to the owner additional financial compensation for reference of information concerning the invention (utility model) to that considered being of State secrecy, as it is done in many countries [13, p. 27-28].

Therefore, on the basis of the analysis of normative and legislative basis of Ukraine concerning the acquisition and protection of property rights in inventions and utility models we were able to single out the main challenges an applicant faces at different stages of patenting of a secret invention (utility model). Efficient patenting of secret inventions demands creating better conditions for inventors who wish to secure their exclusive rights to exploitation of their inventions by improving the national legislation on intellectual property.

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