ICLG - Patent Laws and Regulations - Ukraine 2023
1. Patent Enforcement
- 1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?
The specialised intellectual property court in Ukraine, the IP Court, was officially registered on February 13, 2020, but it is not yet operational. It will have jurisdiction in IP-related disputes and act both as a court of first instance and a court of appeal.
Until the IP Court starts operating, general and commercial courts will continue to have jurisdiction in patent infringement cases. The choice of court depends on the parties’ legal status. Disputes where either one or both parties are natural persons fall under the jurisdiction of general courts. Cases in which the parties are legal entities and/or private entrepreneurs are heard by commercial courts.
Administrative courts can also hear patent infringement cases, particularly those where the minimum damages requirement to qualify for criminal proceedings has not been met.
- 1.2 Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?
- The current rules of procedure do not require the parties to take part in mediation before commencing court proceedings. Mediation and arbitration are still not commonly used alternatives in resolving patent-related disputes.
- 1.3 Who is permitted to represent parties to a patent dispute in court?
- Only attorneys at law can represent parties in patent disputes before courts.
- 1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
Attempting an out-of-the court settlement is not required, i.e. mediation or cease and desist letters are not mandatory before initiating patent infringement proceedings.
In order to commence proceedings, the plaintiff has to file a statement of claim together with all supporting evidence and required documents and pay the required court fees.
In regular civil proceedings, the plaintiff has to file the number of copies of the documents corresponding to the number of parties to the proceedings, including third parties. However, the plaintiff is not required to send the copies to each party. This is done by the court, which distributes the copies along with the notice of the initiation of proceedings.
In commercial court proceedings, along with filing the statement of claim and the supporting evidence with the court, the plaintiff is also required to send the appropriate number of copies of the documents to all parties involved and to present proof of notifying all relevant parties to the proceedings about the filed claim.
In both civil and commercial courts, a ruling on the initiation of legal proceedings is issued within five days from the day of receipt of the statement of claim by the court.
There is a 60-day time limit for the pre-trial stage and preliminary hearings with a possibility of a single 30-day extension, if required, before proceeding with the trial on the merits.
The amount of court fees paid depends on the type of claim (material or non-material), the claimed amount and the court before which the lawsuit is filed.
If the lawsuit covers two or more non-monetary claims, the court fee is paid for each claim. The court fee amount for one non-monetary claim is a fixed sum based on the current statutory living and subsistence minimum (approx. EUR 70 as of July 1, 2022). The court fee is equal to one statutory living and subsistence minimum amount if the statement of claim is filed by a legal entity before either the civil or commercial court (approx. EUR 70), and 0.4 subsistence minimum amount (approx. EUR 28), if filed by a natural person before the civil court.
For monetary claims, the fee amounts to 1.5% of the claimed amount for plaintiffs that are legal entities, and 1% of the claimed amount for plaintiffs that are natural persons. At the same time, the law sets the minimum and maximum court fees that have to be paid for monetary claims that range from approx. EUR 70 to EUR 24,600 for legal entities, and from approx. EUR 28 to EUR 350 for natural persons.
- 1.5 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
Each party is required to provide all available evidence to support their claims when submitting the statement of claim or the statement of defence. This means that the evidence has to be established and collected before proceedings commence.
When facing obstacles in collecting evidence, the plaintiff can request the court to order disclosure of evidence from an opposing party. The defendant can also resort to this mechanism if it can prove that the requested evidence could not have been obtained otherwise. The parties have to identify the evidence they could not obtain at an earlier time, provide reasons justifying the failure to present it on time and prove that they have taken the necessary steps to obtain the evidence.
- 1.6 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
Before starting a court procedure or responding to the claim, the parties must submit evidence along with the statement of claim (plaintiff) and statement of defence (defendant). The parties or their representatives collect evidence (expert opinions, documents, material evidence, written testimonials, electronic evidence, etc.) by submitting requests to third parties and government agencies, ordering expert reports, gathering information from public sources and conducting test purchases.
Technical evidence can be produced in the form of a certified court expert report that can be submitted together with the statement of claim or statement of defence.
At the pre-trial stage, the parties also have to identify evidence that cannot be submitted with the statement of claim or the statement of defence, and file a written statement or request that the court orders the disclosure of evidence.
- 1.7 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
Arguments can be presented during both written and oral pleadings.
Evidence includes written submissions, material and electronic evidence, expert opinions, documents, and witness and expert testimonials.
A change of pleaded arguments and evidence is possible if the plaintiff amends the claim or if a counterclaim is filed.
The plaintiff can change the subject and grounds of the claim during the pre-trial stage, before the end of preliminary hearings.
- 1.8 How long does the trial generally last and how long is it before a judgment is made available?
After the expiration of the pre-trial period (60 days plus a possible 30-day extension), the court proceeds with reviewing the case on the merits and issues a decision within 30 days.
The court suspends the proceedings if an expert is appointed, which is necessary in patent-related disputes, so patent infringement proceedings typically extend beyond the 125 days outlined by the rules of procedure.
In practice, it takes on average six to eight months for the first instance court to issue a decision on the merits, but depending on the circumstances of each case, the trial may last up to several years.
- 1.9 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
- There is no shorter/streamlined court procedure available for patent infringement cases. Although the rules of civil procedure provide for simplified proceedings similar to the summary judgment procedure in common law countries, this type of procedure is not applicable to patent and other IP-related disputes in Ukraine.
- 1.10 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?
Court judgments are made available to the public in an electronic form no later than the next day following the rendering and signing of their full text. If the trial was closed to the public, judgments are published with the exception of the information that is subject to protection.
The Ukrainian State Court Administration provides access to decisions of general courts via the Common State Register of Court Judgments (https://reyestr.court.gov.ua/ ).
- 1.11 Are courts obliged to follow precedents from previous similar cases as a matter of binding or persuasive authority? Are decisions of any other jurisdictions of persuasive authority?
Ukrainian courts are not obliged to follow precedents from previous similar cases, but they must adhere to decisions of the Constitutional Court of Ukraine and statutory interpretations contained in the Plenary Resolutions of the Supreme Court. Ukrainian courts are also required to apply the case law of the European Court of Human Rights.
Decisions of the European Court of Justice (ECJ) can be applied, as well as the provisions of the EU-Ukraine Association Agreement, the Treaty on the Functioning of the European Union and other relevant regulations. The practice and the arguments of the CJEU are considered, but are not treated as the source of law.
- 1.12 Are there specialist judges or hearing officers, and if so, do they have a technical background?
- Ukrainian courts do not have specialist judges with a technical background. However, certain judges specialise in hearing intellectual property cases, especially at commercial courts. If needed, certified court experts with a relevant technical background are appointed by the judge presiding in a case.
- 1.13 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
The patent holder or the licensee may sue for patent infringement. The licensee may act as the plaintiff only if the licensee has been granted the right to enforce patent rights under the licence agreement covering the territory of Ukraine.
In order to prove legal standing in a patent revocation proceeding, the plaintiff must show that its rights and legitimate interests are being infringed or contested.
Declaratory proceedings, as a pre-emptive mechanism aimed at resolving an uncertain situation that implies a potential infringement lawsuit by claiming non-infringement, patent invalidity or unenforceability, are not available in Ukraine.
- 1.14 If declarations are available, can they (i) address non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?
- Declarations are not available in Ukraine.
- 1.15 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 criminal law contains provisions on contributory infringement, and each contributor is held liable according to the extent of his or her involvement. In commercial and civil proceedings, contributory infringement is generally not applicable because it is not clearly provided for in the law; however, if each party practises only some of the elements (or steps) of a patent claim, but together they practise all the elements or steps, multiple parties can be jointly liable for infringement and will act as co-defendants in legal proceedings.
- 1.16 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?
Yes, importing the product made by a patented process outside Ukraine constitutes patent infringement.
A product is considered to be manufactured by using the patented process if at least one of the following two conditions is met:
- the product is new; and
- there are reasons to believe that the product was manufactured by using the patented process, but the patent holder has been to determine the process actually used, by reasonable efforts.
In the latter case, the party suspected of patent infringement has to prove that the process used to produce the product identical to the one obtained through the patented process is different.
- 1.17 Does the scope of protection of a patent claim extend to non-literal equivalents (a) in the context of challenges to validity, and (b) in relation to infringement?
The scope of patent protection is not limited to the use of identical features covered by independent claims; it also extends to equivalent features, provided that the person skilled in the art can recognise these features as resulting in the same technical effect.
The use of each feature covered by an independent claim or its equivalent constitutes infringement. The interpretation of patent claims, the technical problem and technical features contributing to the solution of the technical problem, as well as the assessment of equivalents, is to be determined by a court-appointed expert.
The doctrine of equivalents is also applicable in the assessment of novelty, meaning that equivalents forming part of the prior art challenge the novelty of the patented invention.
- 1.18 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is a pending opposition? Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?
A defence of patent invalidity can be raised by filing an invalidation action before the IPO Board of Appeals. The invalidation action can only be filed within nine months from the publication of the patent registration notice. The alleged infringer can also file a counterclaim seeking patent invalidation. In case of an administrative claim before the IPO Board of Appeals, the court’s review of the defence arguments will be suspended until the matter of the patent’s validity has been resolved.
If an invalidity counterclaim is filed within the infringement proceedings, the court usually reviews both the infringement and the invalidation claims during one consolidated proceeding. The court will decide on the issue of patent infringement after issuing a decision on validity.
- 1.19 Is it a defence to infringement by equivalence that the equivalent would have lacked novelty or inventive step over the prior art at the priority date of the patent (the “Formstein defence”)?
- The Formstein defence has not been in used in the Ukrainian court practice.
- 1.20 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?
The general ground for an invalidation action is that the invention does not meet the patentability requirements (novelty, inventive step and industrial applicability).
Other grounds include the following:
- the granted claims contain features that were not disclosed in the application materials as originally filed;
- a violation of the security provision (for patents registered on the basis of a PCT national phase application, if both the applicant and the inventor are only Ukrainian nationals/residents, the application must be filed in Ukraine first and then receive the foreign filing licence for subsequent filings abroad); or
- the patent was obtained based on an application filed in violation of third-party rights.
- 1.21 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
- Pending invalidation proceedings before a court or the IPO serve as a ground for staying infringement proceedings pending resolution of patent validity.
- 1.22 What other grounds of defence can be raised in addition to non-infringement or invalidity?
- The following additional grounds can be raised:
- existence of a valid licence;
- prior user rights;
- requested compulsory licence;
- non-commercial use for private or scientific purposes;
- use under force majeure circumstances;
- exhaustion of rights;
- an objective inability to know that the used product was manufactured and marketed by infringing patent rights, provided the use has ceased upon notice;
- importation for research purposes or clinical trials aimed at obtaining a marketing authorisation; and
- manufacturing pharmaceuticals subject to supplementary protection for the purpose of exportation to third countries.
The following formal grounds can serve as additional defences:
- lack of standing to sue; and
- statute of limitations.
- 1.23 (a) Are preliminary injunctions available on (i) an ex parte basis, or (ii) an inter partes basis? In each case, what is the basis on which they are granted and is there a requirement for a bond? Is it possible to file protective letters with the court to protect against ex parte injunctions? (b) Are final injunctions available? (c) Is a public interest defence available to prevent the grant of injunctions where the infringed patent is for a life-saving drug or medical device? (Please cross-refer to your answer to question 3.2 if compulsory licensing may be available in this scenario).
Preliminary injunctions can be granted on both an ex parte and an inter partes basis. In most cases, courts rule on the grant of an injunction during ex parte proceedings. The judge may summon the party seeking an injunction or review an injunction request in the presence of all parties.
Preliminary injunctions that can be sought are rather limited in scope and cannot be identical to final injunctions or directly correlate with them. The plaintiff requesting a preliminary injunction must prove that in the absence of temporary measures enforcing the final judgment would be impossible or difficult. The court may ask for a bond.
During inter partes proceedings, the defendant can elaborate on why provisional measures should be rejected. Filing protective letters with the court as a separate preventive tool against ex parte injunctions is not available under the current law.
A public interest defence is also not available to prevent the grant of injunctions.
- 1.24 Are damages or an account of profits assessed with the issues of infringement/validity or separately? On what basis are damages or an account of profits assessed? Are punitive/flagrancy damages available?
Damages or an account of profits can be assessed both together with the issues of infringement/validity or separately.
Patent holders can only claim lost profits and actual damages (losses suffered as a result of the infringement and expenses necessary for the reinstatement of the infringed rights). Punitive/flagrancy damages are not available.
In its assessment of the evidence substantiating the amount of the lost profits, the court relies on a certified expert’s report.
- 1.25 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?
- Orders of the court are enforced during so-called decision executory proceedings. Failure to obey court orders is punishable by fine or imprisonment.
- 1.26 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?
- In addition to injunctions and monetary relief, the patent holder can also seek:
- withdrawal from the market and destruction of the infringing goods;
- withdrawal and destruction of materials and tools used for the manufacture of the infringing goods; and
- publication of the information regarding the infringement and publication of the court decision.
The courts do not grant cross-border relief.
- 1.27 How common is settlement of infringement proceedings prior to trial?
- Settlement of infringement proceedings prior to trial is less common than settlement subsequent to trial.
- 1.28 After what period is a claim for patent infringement time-barred?
- The limitation period for patent infringement disputes is three years from the date on which the patent holder found out or could have found out about the infringement.
- 1.29 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?
- Yes, first instance rulings can be appealed. A party can contest all aspects of the ruling. Facts established by the court of first instance can be challenged on the grounds of being allegedly wrong or incomplete.
- 1.30 What effect does an appeal have on the award of: (i) an injunction; (ii) an enquiry as to damages or an account of profits; or (iii) an order that a patent be revoked?
Filing an appeal stops the execution of a judgment, i.e. makes it unenforceable for the length of the appeal proceedings.
The appeal will not affect the award of a preliminary injunction. Filing an appeal also does not prevent the continuation of the proceedings regarding the main case.
An appeal against a ruling cancelling or changing preliminary injunctions prevents such ruling from taking effect.
- 1.31 Is an appeal by way of a review or a rehearing? Can new evidence be adduced on appeal?
- At the appellate stage, cases are generally reviewed on the basis of evidence presented before the court of first instance. Adducing fresh evidence is possible in exceptional circumstances, if the appellant can show that the filing of such evidence was not possible at an earlier time. In most cases, particularly in patent invalidation proceedings, fresh evidence includes new expert reports requested by the appellate court.
- 1.32 How long does it usually take for an appeal to be heard?
- It usually takes two to six months from the filing of an appeal to the issuance of the decision. However, if an additional court expert is appointed, the proceedings may be prolonged.
- 1.33 How many levels of appeal are there? Is there a right to a second level of appeal? How often in practice is there a second level of appeal in patent cases?
- An appellate court ruling may be further appealled before the cassation court with respect to a limited number of aspects, particularly the incorrect application of substantive and procedural law provisions.
- 1.34 What are the typical costs of proceedings to a first instance judgment on: (i) infringement; and (ii) validity? How much of such costs are recoverable from the losing party? What are the typical costs of an appeal and are they recoverable?
The total costs of a patent infringement lawsuit, including the collecting of evidence, preparing the necessary documents and attending the hearings, varies on average from EUR 25,000 to EUR 50,000 for the first instance trial and EUR 10,000 to EUR 20,000 for the appeal and cassation instances.
The losing party must reimburse the other party’s expenses including court fees and the case-related fees, including:
- legal fees (attorney service fees);
- costs related to the appointment of witnesses, interpreters, court experts, etc.;
- costs associated with the discovery of evidence, securing of evidence and the on-site examination of evidence; and
- costs associated with any other procedural actions.
Both parties must submit their provisional cost estimates and later supply evidence if the final costs turned out to be higher or lower than initially calculated. If the final costs turn out to be considerably higher than expected, the parties must prove that they could not have predicted the final amounts.
In practice, recovering court and expert fees is uncomplicated because these fees do not raise any doubts. With legal service fees, judges often question the scope of the services that were actually provided, requesting a number of documents that can verify the accuracy of information.
- 1.35 For jurisdictions within the European Union: What is the status in your jurisdiction on ratifying the Unified Patent Court Agreement and preparing for the unitary patent package? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?
- This is not applicable to our jurisdiction.
2. Patent Amendment
- 2.1 Can a patent be amended ex parte after grant, and if so, how?
- After the patent is granted, a patentee can file a request with the IPO to correct any mistakes in the specification and claims. A patentee can also file a request to limit the scope of the invention.
- 2.2 Can a patent be amended in inter partes revocation/invalidity proceedings?
- Patent claims can be amended in inter partes revocation/invalidity proceedings only if these amendments narrow the scope of protection.
- 2.3 Are there any constraints upon the amendments that may be made?
- The amendments should not extend the subject matter of the invention beyond the content of the application as originally filed. The allowed amendments include:
- deleting independent claims or substituting independent claims with the respective dependent claims;
- amending features of independent claims, provided that these amendments narrow the scope of protection; or
- introducing features from corresponding dependent claims in the independent claims.
- 3.1 Are there any laws which limit the terms upon which parties may agree a patent licence?
- There is no legislation that limits the terms of a patent licence.
- 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?
If an invention or a utility model, except for a secret invention (or utility model), has not been used or has been insufficiently used in Ukraine within three years from the day following its registration date, or from the date the use of the invention (or utility model) was terminated, any person who wishes to use the invention (or utility model) has the right to ask the court for permission, if the right holder refuses to sign a licence agreement. If the patent holder fails to prove that the non-use is based on a justified reason, the court will grant a compulsory licence and decide on the terms and conditions.
The patent holder is obliged to grant a licence for the use of the invention (or utility model) to the owner of the later-issued patent, if the later invention (or utility model) is intended to achieve another goal or has significant technical and economic advantages but cannot be used without infringing the previously issued patent owner’s rights.
To protect the public interest (health, national security, environmental safety, etc.), the Ukrainian Cabinet of Ministers may allow an individual or an entity of its choice to use a patented invention (or utility model) without the consent of the patent owner.
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?
It is possible to extend the 20-year patent term for inventions related to pharmaceutical products as well as animal and plant protection products that require a marketing authorisation. A supplementary protection certificate (SPC) is available for such products for an additional maximum period of five years.
Products that may receive an SPC must have a valid marketing authorisation in Ukraine, and will only be granted an SPC if the marketing authorisation application in Ukraine was filed within a year from the first, original application filed abroad.
The deadline for applying for an SPC is within six months from either the patent publication date or the first marketing authorisation date, whichever occurs latest.
The validity term of a patent can be extended for the period of time that passed between the patent application filing date and the date of the marketing authorisation, reduced by five years. If the time period is less than five years, obtaining the SPC will not be possible. As mentioned above, the extended term cannot exceed five years.
5. Patent Prosecution and Opposition
- 5.1 Are all types of subject matter patentable, and if not, what types are excluded?
Patents can be obtained for products (devices, substances, microorganism strains, plant or animal cell cultures, etc.) and processes (methods). Use claims can no longer be patented, although such claims may be re-worded as method claims.
The following cannot be patented:
- plant varieties (sui generis protection is available) and animal breeds;
- essentially biological methods for the reproduction of plants and animals, as well as products obtained through such methods, as opposed to non-biological and microbiological methods and products obtained by those methods;
- topographies of integrated circuits;
- the results of industrial design;
- surgical or therapeutical methods of treatment of humans or animals, and human or animal diagnostics methods;
- human germline genetic modification;
- use of human embryos for industrial or commercial purposes;
- processes of altering the genetic identity of animals that may cause their suffering without any significant medical benefit to humans or animals, as well as animals that have been bred using such processes;
- a human organism at different stages of its formation and development, as well as the mere discovery of one of its elements, in particular a gene sequence or its part;
- a product or process involving a plant or animal, the use of which is limited to a particular plant variety or animal breed;
- a product or process related to natural biological material that is not separated from its natural environment or that is not obtained by a technical process;
- discoveries, scientific theories and mathematical methods;
- gaming, competitions, auctions, exercising, intellectual activities, business activities, organisational activities, and commercial activities, methods, rules and schemes;
- computer programs;
- methods for providing information; and
- appearance or aesthetic features of a product.
Software and business methods per se cannot be patented; however, if a computer program is described as a method of performing actions with material objects by means of a computer program, or a system demonstrating a connection between certain devices by means of a computer program and intended to solve a technical problem, it can, in theory, be patented. The same logic applies to business methods: if it can be described not only as a mental process but also as a method involving certain material objects that solves a defined technical problem, it can be patented.
Although methods of treatment are no longer a patentable subject matter, products (substances or compositions) used in diagnostics or treatment are not exempt from patent protection.
First and second medical use claims are not allowed.
- 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?
- The Ukrainian IPO does not require the applicant to disclose prejudicial prior disclosures or documents. If not already illustrated within a patent specification, the IPO may request a listing of the closest prior art and a short explanation of how it fails to solve the technical problem of the claimed invention.
- 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?
A third party may file a pre-grant opposition against a patent application within six months from the application’s publication date.
A post-grant opposition can be filed within nine months from the patent’s publication date.
Pre-grant oppositions are reviewed by the examiner in charge of the application, while post-grant oppositions are brought before the IPO Board of Appeals.
- 5.4 Is there a right of appeal from a decision of the Patent Office, and if so, to whom?
- IPO decisions at the examination stage can be appealed before the IPO Board of Appeals within two months from the date of issuance. Board of Appeals decisions can be further challenged before a competent court.
- 5.5 How are disputes over entitlement to priority and ownership of the invention resolved?
- Priority and ownership disputes are resolved in courts.
- 5.6 Is there a “grace period” in your jurisdiction, and if so, how long is it?
- The law provides for a ‘grace period’ during which public disclosure of the invention by the inventor, or a person that directly or indirectly received information on the invention from the inventor, does not jeopardise its novelty. The novelty grace period is six months before the application filing date, or the priority date if priority is claimed. A person interested in applying this provision is responsible for proving the disclosure.
- 5.7 What is the term of a patent?
- The basic term of validity is 20 years from the application filing date.
- 5.8 Is double patenting allowed?
- No such provisions are included in the local law. It is not explicitly prohibited, although such prohibition is implied, for example, by the mandatory abandonment of the subject matter in the parent application when this subject matter is claimed in a divisional application. There may be cases when a patent for a utility model and a patent for an invention protect the same subject matter, because the IPO does not examine utility model applications as to substance prior to registration. However, double patents for the same invention are not allowed, because patent examiners anticipate the novelty of the subject-matter claimed in the applications being searched, including in the applications by the same inventor(s) and/or applicant(s).
- 5.9 For jurisdictions within the European Union: Once the Unified Patent Court Agreement enters into force, will a Unitary Patent, on grant, take effect in your jurisdiction?
- This is not applicable to our jurisdiction.
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?
- There is an option to record the patent in the customs register of IP rights. The customs watch application should be submitted along with detailed information about the patent, the owner, the local representative and characteristics that may be helpful in identifying a counterfeit product. The patent recordation process lasts up to 30 calendar days from when the application is submitted. Once the patent is recorded, the customs authorities will detain the goods entering or leaving the territory of Ukraine suspected of infringing patent rights and notify the rights owner. The rights owner has 20 working days to provide evidence confirming the infringing nature of the goods. If the goods turn out to be infringing and the importer/exporter is not willing to cooperate and consent to their destruction, the rights owner can ask the court to order the destruction of goods.
7. Antitrust Law and Inequitable Conduct
- 7.1 Can antitrust law be deployed to prevent relief for patent infringement being granted?
- Enforcing a patent can potentially expose the patent holder to liability for a business-related tort or competition violation only if the actions qualify as abuse of rights aimed at restricting rights and the lawful interests of third parties or restricting competition. These are rather exceptional circumstances, and there have been no such cases in practice.
- 7.2 What limitations are put on patent licensing due to antitrust law?
- The limitations of the antitrust legislation do not apply to licensing/assignment agreements which limit the business activity of the assignee/licensee, if these contractual limitations are based and applied within the scope of proprietary rights of the patent holder (i.e. licensor/assignor).
- 7.3 In cases involving standard essential patents, are technical trials on patent validity and infringement heard separately from proceedings relating to the assessment of fair reasonable and non-discriminatory (FRAND) licences? Do courts set FRAND terms (or would they do so in principle)? Do courts grant FRAND injunctions, i.e. final injunctions against patent infringement unless and until defendants enter into a FRAND licence?
- Ukrainian legislation does not foresee FRAND licences and injunctions.
8. Current Developments
- 8.1 What have been the significant developments in relation to patents in the last year?
- On April 1, 2022, a new law on the protection of IP rights during martial law was adopted in Ukraine, in order to establish additional protective mechanisms for IPR holders and applicants in case they cannot comply with deadlines due to unforeseen circumstances caused by the war, or when performing certain actions becomes impossible or complicated. The practical application of this law, which entered into force on April 13, 2022, will become fully evident only after the martial law is lifted, when the indefinite extensions and/or suspensions of terms, provided by the law, become cancelled or start to run their definite lengths.
- 8.2 Are there any significant developments expected in the next year?
- Patent law amendments, which came into force in August 2020, still need to be supported by new or amended laws, which would regulate the proceedings before the Board of Appeals, the obtaining of supplementary protection certificates, amendments related to patent prosecution and the official fees.
- 8.3 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
- The courts and the right holders have not been particularly active this year because of the ongoing war, so no new practice or enforcement trends have become apparent in recent months.
By Oleh Karpenko, Head of Office, Olga Kudoyar, Patent Consultant, Taras Manolov, Patent Attorney and Natalia Stetsenko, Senior Associate at PETOŠEVIĆ Ukraine
This chapter first appeared in ICLG — Patents 2023.