1 Patent Enforcement
1.1 How and before what tribunals can a patent be enforced against an infringer?
In Ukraine there are no courts specially designed to consider patent disputes. Depending on the personality of the patent owner and the infringer the patent can be enforced before general or commercial courts:
- if the patent owner and all of the infringers are legal entities or registered entrepreneurs the claim shall be filed with the commercial court; and
- if at least one of the parties to the proceedings is a natural person the claim shall be filed with the general court.
The general courts also consider cases regarding criminal or administrative liability related to the infringement of the patent rights.
1.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The patent holder is not obliged to recourse to any pre-trial procedural stages such as sending cease-and-desist letters or mediation.
In commercial proceedings the claimant is to send copies of the statement of claim to each of the defendants and the third parties before filing with the court. The judge of a commercial court is required to commence proceedings within 3 days following the day of filing of the statement of claim; the first hearing is usually scheduled within 2 to 3 weeks after commencement of the proceedings.
In civil proceedings the claimant is required to file with the court copies of the statement of claim according to the number ofdefendants and third parties. The court sends them to the defendants and the third parties along with the ruling on commencement of proceedings which should be issued within 3 days of receiving the claim. The judge has discretion asto whetherto appoint a preliminary hearing in the case. Usually the first hearing is appointed within 2 to 3 weeks of commencement of the proceedings.
If one of the defendants is a foreign individual or entity without place of residence or representative office in Ukraine, the court may apply the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters; in such a case the first hearing is scheduled not earlier than in six months after commencement of the proceedings.
1.3 Can a defence of patent invalidity be raised and if so how?
The defence of patent invalidity may be raised as a counter-claim which can be filed before consideration of the case on merits. A counter-claim is considered simultaneously with the initial claim.
1.4 How is the case on each side set out pre-trial? Is any technical evidence produced and if so how?
The statement of claim to be filed by the claimant shall include a remedy sought, statement of facts, details of the available evidence, calculation of damages (if claimed) and other necessary information.
The defendant can file a statement of defence with the arguments and attached evidence.
Technical expert opinions can be filed by each side and are treated as evidence.
1.5 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
The parties present their arguments and evidence in written submissions filed with the court and orally at the trial hearings both in civil and commercial proceedings.
Expert reports ordered and filed by the parties are accepted by the courts as written evidence. However, if technical or scientific issues are to be examined, the courts additionally appoint experts; suchexperts should meet several criteria prescribed by law. It is the at the discretion of the court to determine specific questions to be answered by the expert.
Civil courts accept witness evidence, while in commercial courts witness evidence is inadmissible.
The claimant may change its request for relief or cause of action before the court starts consideration of the case on its merits.
1.6 How long does the trial generally last and how long is it before a judgment is made available?
According to the procedural law, a general court shall render itsjudgment in a civil case within two months starting from the day of commencement of the proceedings; a commercial court shall render its judgment within two months starting from the day when the statement of claim is filed with the court. However, this term can be extended. In most patent litigation cases expert examination of technical or scientific issues is requested and the proceedings are suspended (stayed) until the expert opinion is delivered to the court.
Thus in practice consideration of the case lasts from two months to several years.
The findings of the court shall be pronounced at the last hearing, when consideration of the case is finished; the full text of the judgment shall be available within 5 days of that date.
1.7 Are there specialist judges or hearing officers and if so do they have a technical background?
In Ukraine there are no special judges or hearing officers for patent litigation cases, however some of the judges of the general and commercial courts specialise mainly in intellectual property cases.
As a general rule, the judges do not have a technical background and appoint professional experts to conduct examination if technical issues are involved.
1.8 What interest must a party have to bring (i) infringement (ii) revocation and (iii) declaratory proceedings?
(i) In order to bring infringement proceedings the claimant shall be a patent owner or a licensee authorised by the patent owner to recourse to such proceedings.
(ii) The claimant in patent revocation proceedings is to prove that its right or legitimate interest is infringed or hindered by the patent in issue.
(iii) Ukrainian law does not envisage specific declaratory proceedings in patent matters. Generally, in order to initiate proceedings aimed at recognition of a right to use an invention, utility model or industrial design protected by a patent the claimant’s interest shall be disputed/not recognised by the respondent.
1.9 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
The courts can order disclosure of the documents or materials which are not available to the interested party. The party requesting such disclosure should substantiate what circumstances could be proved by disclosure of the requested documents or materials.
1.10 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of but not all of the infringing product or process?
Ukrainian law does not differentiate between primary and secondary infringers. The patent holder has exclusive right to use the patented invention (utility model) and to prohibit other persons from such use. The following actions are considered the use of the patented invention (utility model):
- manufacturing a product using a patented invention (utilitymodel), use ofsuch product, offering the product for sale (incl. offering via the Internet), sale, import and other introductionthereof into the commercial circulation or storage of such product with the listed purposes; and
- use or offering for use of a patented process (method) in Ukraine, provided that the person offering the process (method) is aware that such use without consent of the patent owner is prohibited or, considering the circumstances, it is obvious.
A product is considered to be manufactured with the use of a patent if each feature included in the independent claim of the patent or equivalent feature thereof is used. A patented process (method) is considered used if each feature included in the independent claim of the patent or equivalent feature thereof is used.
The law provides that in some cases use of invention (utility model) is not considered an infringement of patent rights, e.g. use for scientific purpose.
1.11 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?
The law provides that a product is considered to be manufactured with the use of patented process provided that there is no evidence to the contrary and if at least one of the following criteria is met:
- a product manufactured with the use of the patented process is new; and/or
- there are reasons to consider that the product has been manufactured using the patented process and the patent owner cannot identify a process that has been used for manufacturing of the product by the way of reasonable efforts.
Provided that the above requirements are fulfilled a party can be liable for infringement of a process patent by importing the product even when the process is carried out outside the jurisdiction.
1.12 Does the scope of protection of a patent claim extend to non-literal equivalents?
Yes, a patented invention (utility model) is considered used if each feature included in the independent claim of the patent or equivalent feature thereof is used.
1.13 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?
The law sets forth the following patentability requirements prerequisite for a patent to be valid:
- for inventions: novelty; inventive step; and industrial applicability;
- for utility models: novelty; and industrial applicability; and
- for industrial designs: novelty.
In addition to defects in the patentability criteria described above, a patent may be invalidated by the court in the following cases:
(i) the claims of the patent include features beyond the originally filed application;
(ii) non-fulfilment of the requirement to file an international application with the Patent Office if the invention (utility model) is patented under the PCT; or
(iii) the filing of the patent application violated third parties’ rights.
1.14 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
Yes, the infringement proceedings are stayed until the court renders its judgment in cases where the validity of the same patent is disputed. Often invalidity of patents is raised as a defence in patent infringement cases as a counter-claim; in this case both the claimand counter-claim are considered simultaneously.
1.15 What other grounds of defence can be raised in addition to non-infringement or invalidity?
The following grounds of defence can be raised: use without a commercial purpose; use for scientific purpose and use in the course of an experiment; non-use; use of the product introduced into the civil circulation without infringement of the rights of the patent owner; lack of knowledge of the product purchaser that the product had infringed patents rights when it was manufactured or introduced into the civil circulation; and a parallel claim for compulsory licensing (if there are respective reasons) that may suspend the initial patent infringement case. A party can also refer to expiration and invalidity of patent extension.
Pursuant to the law, patent rights are not infringed in cases of goodfaith use of an object identical or equal to an invention (utility model) or sufficient preparation for such use was conducted prior to the patent application or priority date (the right of prior use).
1.16 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
(i) A preliminary (interim) injunction can be granted by the court if failure to introduce such injunction would make enforcement of the future judgment on the merits complicated or impossible. For example, in order to secure enforcement of future judgment, a claimant may ask the court to prohibit the patent holder from transferring the rights for the disputed patent or granting respective licences to other persons until the judgment is rendered.
A party can request a preliminary injunction either before or after the statement of claim is filed with the court (applicable procedural rules and available measures depend on the stage of the proceeding). A preliminary injunction should not coincide with the remedies sought in the case on the merits.
(ii) Final injunctions are granted by the court if upon considerationof the case on the merits the court finds that the legitimate rights or interests of the claimant have been infringed by the defendant.
1.17 On what basis are damages or an account of profitsestimated?
The court can compensate the following damages suffered by a party as a result of infringement of patent rights:
(i) actual damages (expenditures to be incurred in order to restore the infringed right); and/or
(ii) lost profits which would have been received had the infringement not occurred.
If the infringer received an income as a result of infringement, the amount of lost profits to be compensated should not be less than the income received.
1.18 What other form of relief can be obtained for patent infringement?
In addition to compensation for damages, the court may: grant an injunction prohibiting the defendant from carrying on the infringing activities; invalidate transactions infringing patent rights orrecognise a patent invalid; or order seizure of goods infringing a patent.
1.19 Are declarations available and if so can they address (i) non-infringement and/or (ii) claim coverage over a technical standard or hypothetical activity?
In Ukraine declaratory proceedings in patent matters are not envisaged by law. In order to address the court, a person shall proveviolation of its right or legitimate interest by the defendant, thus non-infringement declarations are not available as a remedy (except for several specific civil issues).
1.20 After what period is a claim for patent infringement time-barred?
The limitation period for a patent infringement claim is three years starting from the date when the claimant became aware or may have discovered the infringement or the infringing person.
1.21 Is there a right of appeal from a first instance judgment and if so is it a right to contest all aspects of the judgment?
All aspects of a judgment of a court of first instance can be contested to the appellate courts, which will reconsider the case on the merits and may accept new evidence if the party bringing it can substantiate that such evidence could not be filed before.
The judgments of the appellate courts can be appealed to the cassation courts which have limited scope of review. In particular, the cassation appeal can be grounded only on incorrect application of material law or violation of procedural law by the lower courts; completeness or correctness of the determination of facts in the case cannot be raised at this level.
On the limited grounds the judgment of the cassation courts may be appealed to the Supreme Court of Ukraine.
1.22 What are the typical costs of proceedings to first instance judgment on (i) infringement and (ii) validity; how much of such costs are recoverable from the losing party?
The cost of proceedings depends on the complexity of the case, the number of court hearings, the evidence involved and other issues.
State duty for filing a case constitutes 1% (in civil proceedings) and 2% (in commercial proceedings) ofthe amount claimed, but not more than EUR 3,200 (depending on the official currency rate). In case of non-material claims, the amount of the state duty is insignificant. In the course of the proceedings the parties have to bear costs of theexpert opinions requested by; such costs usually range from EUR1,000 to 4,000. The amount of state duty and expenses for courtappointed experts are recoverable in the full amount.
Costs of legal services which can be recovered usually amount to 5-10% of the amount of the claim.
1.23 For countries within the European Union: What steps are being taken in your country towards ratification, implementation and participation in the Unitary Patent Regulation (EU Regulation No. 1257/2012) and the Agreement on a Unified Patent Court? For countries outside of the European Union: Are there any mutual recognition of judgments arrangements relating topatents, whether formal or informal, that apply in your country?
It is not obligatory for a Ukrainian court to uphold the findings of a foreign court. A foreign judgment may be filed by a party asevidence in a case, however it will not have pre-emptive force with
respect to other evidence.
2 Patent Amendment
2.1 Can a patent be amended ex parte after grant and if so
how?
According to Ukrainian law, a patent can be amended after grant on the basis of a relevant application filed by the patent holder, a court judgment or a decision by the Patent Office. In this case the Patent office holds its proceedings ex parte.
2.2 Can a patent be amended in inter partes revocation proceedings?
There are no special inter partes revocation proceedings for a patent amendment foreseen by Ukrainian law.
2.3 Are there any constraints upon the amendments that may be made?
The following amendments can be made in respect of the patent after grant: change of name of the patent owner or the inventors; correction of mistakes; etc. Also, the amendments may be related to conversion of a declaratory patent into a full-scale patent, patent extension, or amendment of the scope of the patent.
3 Licensing
3.1 Are there any laws which limit the terms upon which parties may agree a patent licence?
The Civil Code of Ukraine sets general requirements for patent licensing agreements. The Act of Ukraine on Protection of the Rights to Inventions and Utility Models and the Act of Ukraine on Protection of the Rights to Industrial Designs set rules regulating issues in respect of inventions, utility models and industrial designs respectively.
A patent licensing agreement shall be made in writing and shall describe particular patent rights granted under the agreement; patent rights and ways of use of the invention (utility model, industrial design) not mentioned in the agreement are considered not granted to the licensee. The patent licensing agreement cannot be executed in respect of the patent rights which are not in force at the time of execution of the agreement. The term of the patent licensing agreement shall expire not later that the respective patent expires.
3.2 Can a patent be the subject of a compulsory licence and if so how are the terms settled and how common is this type of licence?
The law envisages several cases when a compulsory licence can be obtained, however this type of licence is not common in Ukraine.
If an invention (utility model) is not used or is insufficiently used in Ukraine for three years either after the issuance of a patent or from the last date of use and the patent owner refuses to grant a licence, then an interested person may apply to the court in order to obtain a compulsory licence. The court can grant a compulsory licence to the interested person if the patent holder fails to prove good reasons for non-use.
A patent owner is obliged to grant a licence for use or invention (utility model) to the owner of a patent, granted later, if the latter invention (utility model) has another purpose or sufficient technical and economical advantages and cannot be used without infringement of the rights of the owner of the patent that had been granted earlier.
Pursuant to the law, the Cabinet of Ministers may permit use of the invention or utility model protected by a patent to protect the health of the population, ecological safety and other public interests subject to conditions provided in the legislation.
4 Patent Term Extension
4.1 Can the term of a patent be extended and if so (i) on what grounds and (ii) for how long?
A patent owner can file a motion for extension of the term of a patent for an invention protecting the following objects: drugs; crops and animals protection products; or other products, the use of which requires marketing authorisation from the state authorities. The patent can be extended for a term corresponding to the period between the filing of the patent application and the date when the respective marketing authorisation was granted, but not exceeding five years.
5 Patent Prosecution and Opposition
5.1 Are all types of subject matter patentable and if not what types are excluded?
Pursuant to the Act of Ukraine on Protection of the Rights to Inventions and Utility Models, the following objects are not patentable: plant varieties and animal breeds; basic biological (except for non-biological and microbiological) processes of the reproduction of plants and animals; integrated circuit topography; and industrial designs. Additionally, theoretical or scientific principles, mathematical methods, plans, rules and methods for carrying out mental processes, playing games or doing business, computer programs, etc. are not considered inventions and utility models in Ukraine.
Legal protection shall be granted to an invention (utility model) which does not contradict the public order, humanity and morality and which complies with the requirements of patentability.
5.2 Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?
There is no direct rule in Ukrainian law obliging the applicant to disclose any prejudicial disclosures or documents in the application to the Patent Office. If the preliminary or final notice of refusal to grant a patent refers to prejudicial prior disclosures or documents, the Patent Office should disclose them.
5.3 May the grant of a patent by the Patent Office be opposed by a third party and if so when can this be done?
The patent may be challenged in a court by a third party within a limitation period by filing a revocation (invalidity) case.
5.4 Is there a right of appeal from a decision of the Patent Office and if so to whom?
The applicant may file an appeal from a decision of the Patent Office in respect of an application to the court or the Appellate Chamber of the Patent Office.
5.5 How are disputes over entitlement to priority and ownership of the invention resolved?
The general and commercial courts resolve the disputes over entitlement to priority and ownership of the invention.
5.6 Is there a “grace period” in your country and if so how long is it?
There is a 12-month grace period before the filing date of a patent application with the Patent Office. According to Ukrainian law, recognition of a patentable invention (utility model) does not depend on the disclosure of information on the invention (utility model) by an inventor or by a person who has received such an information directly from an inventor or indirectly within 12 months prior to the date of filing the applicationwith the Office, or, if the priority has been claimed, before the priority date. The person interested in using this provision is obliged to prove the circumstances for the disclosure of information.
5.7 What is the term of a patent?
A standard patent for an invention has a term of 20 years from the filing date. The term of the patent for an invention, the object of which is a drug, crop or animal protection product or other product the use of which requires permission of the relevant authorisedbody, may be extended at the request of the owner of this patent for a period that is equal to the period between the date of filing the application and the date of the receipt of such a permission, but not exceeding five years.
The term of a declarative patent for a utility model or an industrial design is 10 years from the date the application is filed with the Patent Office. The term of the patent for industrial design may be extended for up to 5 years.
6 Border Control Measures
6.1 Is there any mechanism for seizing or preventing the importation of infringing products and if so how quickly are such measures resolved?
A patent holder may apply to record a patent in the customs register of IP objects. Upon recording in the customs register, customs authorities shall take measures to prevent movement of patent infringing goods across the customs border. They may suspend customs clearance of goods suspected of infringing IP rights and notify the right holders respectively. Within 10 days the right holder may then bring a court action for patent rights protection, file an application to extend the suspension term or give permission for customs clearance of the suspended goods.
7 Antitrust Law and Inequitable Conduct
7.1 Can antitrust law be deployed to prevent relief for patent infringement being granted?
The antitrust laws of Ukraine do not envisage instruments to be deployed to prevent relief for patent infringement being granted,except for specific rules relating to a patent licensing agreement (the details of which are described below).
7.2 What limitations are put on patent licensing due to antitrust law?
Pursuant to the antitrust law, limitations of the business activities of the licensee imposed by the patent licensing agreement should not exceed the legitimate rights of the patent holder granting the licence. The Act of Ukraine on Protection of Economic Competition provides that the following limitations on the business activities set in a patent licensing agreement shall not be considered anticompetitive concerted actions: limitations regarding scope of the rights granted under the agreement; the time period and territory of permit to use the IP object; and the types of commercial activities, field of use, minimal volume of manufacturing.
8 Current Developments
8.1 What have been the significant developments in relation to patents in the last year?
Execution of the economic part of the Ukraine-European Union Association Agreement on 27 June 2014 gave an impulse to lawmaking aimed at adjusting Ukrainian IP law to the EU law and the Association Agreement itself; the latter foresees a reduction in the amount of time for which the term of a patent in the field of pharmacy can be extended, the introduction of additional criteria of patentability for industrial designs and changes in the term of their protection. In January 2015 rules regulating marketing authorisation of pesticides and agrichemicals were supplemented with a new provision, according to which a court judgment establishing infringement of IP rights of the third persons shall be the grounds for refusal to grant or revocation of the marketing authorisation (patent linkage).
8.2 Are there any significant developments expected in the next year?
Taking into account obligations of Ukraine under the UkraineEuropean Union Association Agreement, it is expected that new IP legislation will be introduced during 2016. A bill amending regulation of industrial designs to reduce patent trolling has recently been filed with the Parliament of Ukraine; it introduces additional criteria of patentability of industrial designs (individual character), provides legal protection to non-registered industrial designs, and introduces an opposition period in respect of registration of industrial design.
8.3 Are there any general practice or enforcement trends that have become apparent in Ukraine over the last year or so?
During 2014-2015 the courts considered one of the first claims which raised the issue of the illegal extension of a term of a patent; before this case, challenging a patent extension term was not common in Ukraine.