Patents - Ukraine: Lexology GTDT Practice Guides
Patent enforcement proceedings
Lawsuits and courts
- What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?
Ukrainian law provides for the following remedies for enforcing patent rights:
Civil or economic remedies
The patent holder can bring an action against an infringer in the civil (if the infringer is a physical person) or commercial court (if the infringer is an entrepreneur or legal entity) and seek to stop the unauthorised use of the patented invention and the withdrawal of the infringing products from the market and their destruction. The patent holder can also claim damages caused by the infringement, but the claimed damages have to be confirmed in an expert’s report that is submitted to the court along with the statement of claim.
Criminal proceedings can be initiated if wilful infringement causes a significant damage to the patent holder. The monetary damage threshold for criminal proceedings is equivalent to approximately €700 worth of damages. The criminal case is opened and investigated by the police based only on the rights holder’s complaint (ex officio investigation is not possible). Only an individual or a group of persons can be prosecuted in criminal proceedings. Legal entities cannot be held criminally liable. After a pre-trial investigation and a public prosecutor’s submission of the indictment, the court proceeds with the trial. If found guilty, the infringer can face the following sanctions: a fine of approximately €115 to €1,700; up to two years of correctional labour; or up to six years’ imprisonment.
The Ukrainian Code on Administrative Offences contains provisions on administrative liability for patent infringement. Administrative proceedings are initiated if the minimum damage requirement to qualify for criminal proceedings has not been met. Other than fines in the amount of approximately €60 to €115, administrative sanctions include confiscation of infringing products, equipment and materials used for their manufacturing.
The specialised IP court, the Ukrainian High IP Court, emerging as a result of recent judicial reform, is in the process of formation. On 13 February 2020, the court was officially registered, but it is not operational yet.
Trial format and timing
- What is the format of a patent infringement trial?
- A patent infringement trial follows the general format of a civil litigation trial. Each party must submit the evidence (experts’ opinions, documents, material evidence, written testimonials, electronic evidence, etc) along with the statement of claim (plaintiff) and statement of defence (defendant). The duration of a trial prescribed by the rules of procedure is 90 days from the initiation of the proceedings (it can be prolonged for 30 days by the court or based on a party’s request). However, in practice, patent infringement trials can last much longer due to a number of factors, such as the involvement of court-appointed experts, the amount of evidence the court needs to review and the motions raised by the parties. On average, it takes six to eight months for the court of first instance to issue a judgment on the merits. Cross-examination of witnesses is permitted if inconsistencies in their testimonies have to be resolved. In the court of first instance, the case is heard by one judge. Appeals are heard by a panel of three judges.
- What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?
- The rules of procedure provide that each party must submit evidence in support of its claims. The extent of the parties’ involvement in the evidential process varies depending on the type of proceeding and each particular case, but the general rule says that each party is required to support their arguments and allegations by presenting evidence.
Standing to sue
- Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?
- 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 Ukraine. A third party can sue on behalf of the rights holder based on a power of attorney granting such rights. The infringer can file a counterclaim seeking patent invalidation.
Inducement, and contributory and multiple party infringement
- To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?
- Ukrainian criminal law contains provisions on contributory infringement and each contributor is held liable according to the extent of his involvement in patent infringement. In economic or civil proceedings, this concept 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.
Joinder of multiple defendants
- Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?
- Multiple parties can be co-defendants in the same proceedings if the claims against each defendant arise from the same grounds (facts). If different individuals or entities perform actions (such as the manufacture, importation and marketing of the same patented product) that require an authorisation from the patent holder, they can be joined as co-defendants in the same proceeding.
Infringement by foreign activities
- To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?
- They can be used only as an additional argument demonstrating the scope of defendant’s activities or the global and international scale of the infringement. However, activities taking place outside Ukraine cannot substantially influence the proceedings, or contribute to the sanctions applied.
Infringement by equivalents
- To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?
Under Ukrainian law, the scope of patent protection is not limited to the use of identical features covered by independent claims, but also extends to equivalent features, provided that the person skilled in the art will recognise these features as resulting in the same technical effects. The law reads that the use of each feature covered by an independent claim or its equivalent constitutes infringement. The interpretation of the patent claims, the technical problem and technical features attributing 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, therefore, applicable to Ukraine. The legal basis for applying it is article 28, paragraph 2 of the Patent Law. Furthermore, the Ukrainian Patent and Trademark Office provides interpretation of the doctrine of equivalents and its application in the assessment of novelty in its Methodical Guidelines for Examination of Inventions and Utility Models.
Discovery of evidence
- What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?
- Unlike in common law jurisdictions, in Ukraine there are no pre-trial procedures in a lawsuit, such as discovery of evidence. Each party is required to provide the court with all available evidence in support of their claims when submitting the statement of claim or the statement of defence. The parties or their representatives collect evidence by submitting requests to third parties and governmental agencies, ordering expert reports, gathering information from public sources and conducting test purchases before starting a court procedure. If there are any obstacles to collecting evidence, the plaintiff can file a motion with the court asking it to order the defendant or other parties possessing the information or evidence to provide it. The same mechanism is available for the defendant if the defendant can prove that the requested evidence could not be obtained outside the court. The court can request evidence from abroad by sending requests to competent state authorities in foreign jurisdictions through the Ukrainian Ministry of Foreign Affairs.
- What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?
- A ruling on the initiation of legal proceedings is issued by the court within five days from the day of receipt of the statement of claim. Under the rules of procedure, the court has 60 days for a preparatory trial with a possibility of a single 30 days extension, if required. After the expiration of the preparatory trial period, the court has to proceed with reviewing the case on the merits and issuing a ruling within 30 days. Given that the court suspends the proceedings if a court expert is appointed (which is necessary in patent-related disputes), the timetable for a patent infringement lawsuit typically extends beyond the 125 days outlined by the rules of procedure. In practice, it takes on the average six to eight months for the court of first instance to issue the decision on the merits. The duration of the appeal hearing set forth by the rules of procedure is 60 days, but in practice the appeal review can take four to six months (the actual timeline often depends on the court’s workload). The appellate court ruling can be further appealed to the Supreme Court within 20 days from the date it was issued. The Supreme Court reviews the case within 60 days from the date of initiation of the proceeding.
- What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?
- The total costs of a patent infringement lawsuit, including gathering evidence, preparation of all necessary documents and attending the hearings, varies, on average from €25,000 to €50,000 for the first instance and €10,000 to €20,000 for the appeal and cassation instances.
- What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?
- Negative first-instance decisions can be appealed before the appellate court. Appellate court rulings can be further appealed before the Supreme Court. New evidence can be submitted only if the party presenting it can prove that it was not possible to present this evidence during first-instance proceedings.
- To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?
- 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.
Alternative dispute resolution
- To what extent are alternative dispute resolution techniques available to resolve patent disputes?
- Alternative dispute resolution mechanisms, such as mediation or judge-led settlement negotiations, are available, but they are rarely used to resolve patent disputes in practice.
Scope and ownership of patents
Types of protectable inventions
- Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
A patent can be obtained for a product (a device, a substance, a microorganism strain, or a culture of cells of plants or animals, etc), a process (method), or a new use of a product or process.
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 opposed to non-biological and microbiological methods;
- topographies of integrated circuits;
- the results of industrial design;
- discoveries, scientific theories and mathematical methods;
- methods of intellectual activities, business activities, organisational activities and commercial activities;
- rules for exercising, games, competitions and auctions;
- plans and schemes for structures, buildings or territories;
- identification marks (signs), schedules, instructions, etc;
- computer programs; and
- methods for providing information.
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, namely 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.
There are no limitations to patenting the methods of medical treatment, but they cannot be contrary to the public interest and the principles of humanity and morality.
- Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?
The patent rights to an invention made by an employee belong to the employer. The employer has to decide what to do with the invention within four months after the employee informs him or her about the invention, and to sign an agreement with the employee, stipulating inter alia the amount of remuneration and the terms of its settlement. If these requirements are not met, the rights belong to the inventor (employee) or his or her assignee.
The ownership of rights to an invention created by an independent contractor, multiple inventors or a joint venture are determined by an agreement between the parties involved.
The patent owner is recorded in the letters patent and in the register of patents for inventions and utility models. To transfer the rights, the patent holder and the assignee have to sign an assignment deed and file it with the Ministry for Development of Economy, Trade and Agriculture. If the documents meet the requirements of the regulation on the recordation of assignments, the Ukrainian Patent and Trademark Office will publish information on the transfer of rights in the local IP bulletin and record the new patent owner in the register.
- How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?
- A patent validity can be challenged only on the following grounds:
- the invention does not meet the patentability requirements (novelty, inventive step, and industrial applicability);
- the invention claims contain features that were not present in the application materials as originally filed;
- a Ukrainian resident filed a patent application abroad without filing it first with the Ukrainian Patent and Trademark Office; and
- the patent grant is a result of a patent application infringing the rights of a third party.
There is not as yet a special IP court for challenging patent validity nor a special administrative tribunal. The High IP Court is in the process of formation.
Absolute novelty requirement
- Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?
- ‘Absolute novelty’ is one of the patentability requirements in Ukraine. At the same time, the law provides for a ‘grace period’ preceding the filing date, 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 12 months preceding 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.
Obviousness or inventiveness test
- What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?
- An invention is considered inventive if it is not obvious to a person skilled in the art and if it does not obviously derive from the prior art. A ‘person skilled in the art’ is a specialist in a particular field, having access to knowledge that became publicly available before the filing date, or, if priority is claimed, before the priority date. The term ‘knowledge’ covers books, manuals, monographs and other published studies in a particular field, as well as patent documentation, scientific articles, etc.
- Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?
- The law does not provide for any grounds based on which the patent can be deemed unenforceable. In general, the presumption of patent validity applies, so challenging the patent’s enforceability would mean challenging its validity. The only circumstance under which a patent is unenforceable is if the three-year statute of limitation period has passed by the date on which a patent holder files an infringement action.
Prior user defence
- Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?
- Any person who started using a patented technological or technical solution or has made preparations for using it in commerce before the application filing date or, if priority is claimed, before the priority date, has the right to continue using the invention for free. The prior use defence covers all types of inventions.
Monetary remedies for infringement
- What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?
The patent holder can claim the actual damages suffered as a result of the infringement, including the costs required for the restoration of the situation that existed prior to the infringement as well as the lost profit. The law does not provide for punitive damages. In any case, the patent holder must prove the amount of damages sought.
Patent damages start to accrue from the date that the application is published. As of this date, temporary protection is provided to the invention, but the patent holder can seek damages only after the patent is granted.
There is no unified approach to the calculation of damages, but in general the amount of lost profit awarded by the court may not be less than the amount of profit obtained by the infringer. If there is no profit that derived from the infringement, the calculation of the actual damages suffered by the patent holder is generally based on the cost of licences granted in Ukraine. If the patent holder does not have a licence agreement covering Ukraine, the calculations are based on the cost of a ‘hypothetical’ licence. In that case, royalties are calculated in view of the current market situation. Court experts may be involved in the assessment of damages.
Injunctions against infringement
- To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?
A temporary injunction may be requested at any stage of the proceeding and can be obtained if the plaintiff proves that the absence of injunctive relief will make the enforcement of the final judgment difficult or impossible. Temporary injunctions may also be sought against third parties, such as defendant’s suppliers or customers.
At the same time, temporary injunctions may not include measures that would be considered a resolution of the case on the merits. They may not be the same as the final remedies sought. For this reason, temporary injunctions in patent infringement proceedings are rather uncommon. For example, prohibiting the sale or importation of products incorporating the patented invention cannot be obtained as a temporary injunction because the courts would treat these measures as a recognition of the fact of the infringement prior to hearing and deciding the case on the merits. However, the plaintiff may request measures such as freezing the infringer’s accounts and assets, and seizing the goods and property.
Final injunctions sought by the plaintiff are granted after hearing the case on the merits. They can include only those measures deemed by the court as due remedies against the committed infringement. Preventive claims against the infringer’s future actions that might create a threat of infringement are not accepted.
Banning importation of infringing products
- To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?
Ukraine’s Customs Code provides for border measures against goods infringing intellectual property rights. The measures, inter alia, extend to patents for inventions. However, in practice, the Customs authority does not monitor the transit of goods incorporating patented inventions owing to the difficulty in identifying such infringement.
At the same time, if a patent owner becomes aware of an expected importation or exportation of infringing goods, he or she can notify the Customs authority and provide all the relevant details about the importer or exporter. In that case, once the declarations are submitted by the importer or exporter, the Customs authority will notify the patent owner about the detention. The notification triggers a 10-day term during which the patent owner must decide whether to release the goods or proceed with a lawsuit against the importer or exporter. This term can be extended for 10 additional days, after which the patent holder must submit a court ruling on the initiation of the legal proceeding and preliminary relief (the suspension of the customs clearance procedure) so that the Customs authority can suspend the clearance of goods that are suspected of infringing the patent for the duration of legal proceedings.
There is no specific tribunal to block the importation of infringing products into the country. Lawsuits are brought before civil or economic courts.
- Under what conditions can a successful litigant recover costs and attorneys’ fees?
The winning party can recover the costs and attorney’s fees.
Both parties to legal proceedings must submit their provisional cost calculations to the court. The plaintiff encloses the calculation sheet with the statement of claim, while the defendant submits his calculation with his response. This calculation is not final as each party can prove that the final costs are higher or lower than the initially calculated sum. However, if the actual final costs turn out to be considerably higher than the costs mentioned in the initial calculation, the party must prove that it could not predict this final amount. Otherwise, the court may reject the amount of compensation sought from the losing party or reduce the claimed amount. The court may also compare the amount of compensation sought by the winning party with the average attorney’s fees applicable on the market.
- Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?
- There are no additional remedies applicable specifically against a deliberate or wilful infringer in civil proceedings. There is no approved test or standard to determine whether an infringement is deliberate. This is assessed by the court on a case-by-case basis depending on the circumstances of each case.
Time limits for lawsuits
- What is the time limit for seeking a remedy for patent infringement?
- It is three years from the date on which the plaintiff has become aware or could have become aware of the infringement.
- Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?
The law provides for the possibility of marking patented products or their packaging with patent numbers. Given that this is an option and not an obligation, there are no legal consequences for failing to mark a patented product.
The patent law itself does not contain provisions on the consequences of false patent marking, but this can qualify as a violation of the consumer protection, unfair competition and advertising laws.
- Are there any restrictions on the contractual terms by which a patent owner may license a patent?
There are no restrictions on the contractual terms, but the national legislation provides for the list of compulsory details that have to be provided in the licence agreement. The agreement must be in writing and may be granted only in respect of a valid patent.
The following information must be provided in the agreement:
- the parties to the agreement;
- the subject matter to be licensed;
- the patent number;
- the title of the invention or utility model;
- the scope of the rights to be transferred;
- the licence type (exclusive or non-exclusive);
- the term of the licence agreement;
- the territory of the licence agreement; and
- the addresses of the parties involved.
Registration of licensing agreements before the Patent and Trademark Office is not compulsory in Ukraine.
- Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?
If an invention or utility model is not used or is insufficiently used by its owner at the end of three years after the publication of a patent grant in the local IP bulletin or three years after the date the use was stopped, any person willing to use the patented invention or utility model may request a court to grant him or her a permission, provided that the patent owner refused to grant a licence. If the patent owner does not prove that there were substantial reasons for not using the invention or utility model, the court will rule on the grant of a permission to the third party and determine the scope of use, the term of use and the remuneration (licence fees).
A patent owner is obliged to grant a permission (licence) to use his or her invention or utility model to a patent owner of another patent granted later, if the later patent is aimed at resolving another technical problem or if it has a technical and economic advantage over the earlier invention and cannot be used without infringing the rights to the earlier patent. That licence must be limited to the scope of the use of the later patent.
Patent office proceedings
Patenting timetable and costs
- How long does it typically take, and how much does it typically cost, to obtain a patent?
- It typically takes about two to four years to obtain a patent for invention and about one year to obtain a utility model certificate. The total cost (official fees and average service fees included) to prosecute an application with one independent claim, 10 claims in total and 15 pages of specifications and claims (additional independent and dependent claims and additional pages will involve extra fees) ranges from €1,500 to €2,500 for an invention and about €950 to €1,500 for a utility model. Translation costs are not included in this estimate.
Expedited patent prosecution
- Are there any procedures to expedite patent prosecution?
- The Patent Prosecution Highway is not available in Ukraine. However, it is possible to expedite substantive examination, which is subject to additional official fees in the amount of €332 for one independent claim and €270 for every subsequent independent claim (the regular fee is €230 for each independent claim). In this case, the examination process takes about three months.
Patent application contents
- What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?
- The requirements for patent specifications are set forth in the Rules on Application Drafting which provide general guidelines on the disclosure of each particular subject matter (substance, method, device, etc).
Prior art disclosure obligations
- Must an inventor disclose prior art to the patent office examiner?
- There is no such requirement.
Pursuit of additional claims
- May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?
- It can be done by filing divisional applications before a positive examination result is granted to a parent application or by filing applications to claim priority from the earliest filed application. The later applications should be filed within 12 months from filing date of the first application.
Patent office appeals
- Is it possible to appeal an adverse decision by the patent office in a court of law?
- A decision of the Ukrainian Patent and Trademark Office can be challenged before a civil court. This will change once the special IP Court starts functioning.
Oppositions or protests to patents
- Does the patent office provide any mechanism for opposing the grant of a patent?
- It is not possible to file an opposition against a pending application. A third party can submit arguments or prior art information to the examiner in charge but examiners are not obliged to take such arguments into consideration and it is not likely to affect the final decision of the examiner.
Priority of invention
- Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?
- Under the patent law, if several inventors independently created the same invention or utility model, the right to a patent belongs to the applicant whose application has the earliest filing date, or if priority is claimed, the earliest priority date, unless this application is considered or has been withdrawn, or a refusal to grant a patent has been issued for this application. Priority disputes are to be resolved in courts.
Modification and re-examination of patents
- Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?
After the patent is granted, it is possible to file a request with the Ukrainian Patent and Trademark Office to correct any mistakes in the specification and claims. A patentee can also file a request to limit the scope of the invention by deleting independent or dependent claims.
A patent owner can surrender its rights to a patent in full or in part by filing a notice with the Patent and Trademark Office. The surrender becomes effective on the date of the publication of the notice in the official bulletin. Otherwise, a patent can be revoked if the patent owner fails to pay patent annuities on time. In that case, the patent is deemed to be revoked as of the first day of the year for which the annuity was not paid. The grace period for late payment of annuities is within 12 months from the expiration of the deadline.
The court does not amend patent claims during a lawsuit. If the patent owner wishes to amend the claims by reducing the scope of protection, it must file a request with the Patent and Trademark Office. At the same time, during invalidation proceedings, a court may rule on full or partial patent invalidation. If the patent owner files for a claim amendment that limits the scope of protection in the course of a pending invalidation proceeding, this may terminate the proceedings because the limitation can remove the ground for the claim.
There is no re-examination procedure for granted patents in Ukraine.
- How is the duration of patent protection determined?
Patent rights take effect on the day following the patent registration date (which is also the date of publication of the granted patent in the local IP bulletin) and last until the expiration of the 20-year period starting from the application filing date. The term of patents related to pharmaceuticals and agrochemicals that require a marketing authorisation may be extended by up to five years.
Provisional (temporary) protection is effective from the date of publication of a patent application in the local IP bulletin and expires when the patent is granted.
Update and trends
Key developments of the past year
- What are the most significant developing or emerging trends in the country’s patent law?
Major steps in the formation of Ukraine’s new High IP Court took place last year, including qualifying exams for candidate judges. On 13 February 2020, the High IP Court was officially registered as a legal entity and the process of its establishment is underway.
Further revisions of the patent law aimed at its harmonisation with the provisions of the Deep and Comprehensive Free Trade Area agreement between the EU and Ukraine are ongoing.
Law stated date
- Give the date on which the information above is accurate.
- 3 April 2020.
This patent guide first appeared on Lexology.