Patent Litigation 2023

According to the Law of Ukraine "On Protection of Rights to Inventions and Utility Models" (the "Patent Law"), an invention or utility model is a result of intellectual, creative human activity in any field of technology.

Intellectual property rights to either inventions or utility models are confirmed by patents in Ukraine. Legal protection is also provided to secret inventions or utility models that contain information classified as a state secret.

An invention is patentable, if it is (i) new, has (ii) an inventive step, and is (iii) industrially applicable. A utility model meets patentability criteria if it is merely (i) new and (ii) industrially applicable.

Inventions, including any technologies, may also be protected as commercial secrets.

Intellectual property rights to an invention or utility model arise once a respective patent, confirming the rights, is granted. A patent is granted upon examination of the invention or utility model by the state organisation, the Ukrainian National Office for Intellectual Property and Innovations (UA PTO).

If an object is patented under the Patent Co-operation Treaty, the international application is submitted to the International Bureau of the World Intellectual Property Organization that decides on its patentability.

Intellectual property rights to an invention protected as a commercial secret arise out of an agreement where the parties agreed to treat information about the technology as a commercial secret.

The average grant procedure term is around three years for inventions and one and a half to two years for utility models. However, each individual case depends on the complexity of the object, the volume of files involved and the number of office actions to be overcome. It should be noted that information about an application for an invention is published only 18 months after its submission if it has not been withdrawn; ie, an applicant receives an 18-month period during which the essence of the invention is not disclosed.

Ukrainian citizens and legal entities may act on their own behalf before the UA PTO or authorise a representative. The law does not set any restrictions on a person of representative in such a case. However, foreigners, stateless persons, foreign legal entities, and other persons who have permanent residence outside Ukraine may exercise most of their rights in their relations with the UA PTO through patent attorneys only.

The official cost associated with the granting procedure is established by the government. The average official cost is approximately USD400–700, excluding patent attorney’s fees.

The term of intellectual property rights for an invention is 20 years as from the date of filing the application with the UA PTO or the date of filing the international application.

The term of intellectual property rights for a utility model is ten years as from the date of filing the application with the UA PTO.

A fee must be paid for maintaining a patent for each year of its validity. In addition, the law allows supplementary protection for some inventions, which should be confirmed by a Supplementary Protection Certificate and may not exceed five additional years.

The term of intellectual property rights for an invention protected as a commercial secret is set forth in the respective agreement.

The Martial Law imposed in Ukraine in 2022 caused a legal ambiguity regarding IP rights terms. Namely, according to the Law of Ukraine "On Protection of Interests of Persons in the Sphere of Intellectual Property during Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine", IP rights, the validity of which expires on the day of imposition of the Martial Law in Ukraine or during the Martial Law, shall remain valid until expiry or cancellation of the Martial Law. Upon expiry or cancellation of the Martial Law, the term of validity of IP rights may be extended in the manner envisaged by the regular IP law. In view of the main purpose of the above norm, and in combination with other provisions of the said Law, it may rather be interpreted as suspension of deadlines for renewal of IP rights and other prosecution terms only. However, to date in patent infringement cases involving the patents that have expired during the Martial Law, the first instance and appellate courts have been reluctant to close the proceedings since they deem such patents valid until the Martial Law expires/is terminated.

A patent holder has a right to use their invention/utility model at their own discretion, provided that such use complies with the law and does not infringe the rights of other patent holders.

The Patent Law lists the following actions as use of the invention/utility model:

• manufacturing a product using a patented invention/utility model, using such product, offering for sale, including via the internet, selling, importing and otherwise introducing into turnover or storing such product for the said purposes; and

• applying a process protected by a patent or offering it for use in Ukraine, if a person offering such process is aware that the use is prohibited without a patent holder’s consent or, given the circumstances, it is obvious.

A patent holder also has a right to prohibit or allow use of its invention/utility model, demand ceasing an infringement, and recover damages caused by an infringement.

The Patent Law sets forth the following obligations of a patent holder:

• to pay the fees for maintaining validity of intellectual property rights for an invention/utility model; and

• to use its rights to an invention/utility model in good faith.

All patents are published in the respective state registers available online and constantly updated by the UA PTO. There are no separate registers of patents in specific areas (eg, medicinal products) in Ukraine.

A commercial secret owner has the right to use their commercial secret, and to prohibit or allow such use.

Since 16 August 2020, supplementary protection certificates (SPCs) have been available in Ukraine.

A holder of a patent for (i) an active pharmaceutical ingredient of a medicinal product, the process for obtaining a medicinal product or application thereof; or (ii) an animal protection product or plant protection product, which require marketing authorisation in Ukraine, has the right to extend the term of validity of the intellectual property rights (supplementary protection), which is certified by the SPC.

An SPC is issued at the request of a patent holder. There is a fee for submitting the application.

The rights to supplementary protection shall be limited to products that received marketing authorisation in Ukraine under the Ukrainian law and their use as medicinal products, animal protection products or plant protection products within the scope of rights granted by a respective patent on the day of applying for the SPC.

Conditions to be complied with while applying for supplementary protection include that:

• a patent holder may obtain supplementary protection if a request for marketing authorisation in Ukraine was filed within one year as from the date of submitting such a request for the first time in any country;

• the term of supplementary protection shall be equal to the period between filing the patent application with the UA PTO and the date of receipt by the patent holder of the first market authorisation in Ukraine, reduced by five years – generally, the term of supplementary protection may not exceed five years;

• for patents protecting the active pharmaceutical ingredient of a medicinal product intended to be used by children, which is indicated in the market authorisation file, the term of supplementary protection is additionally extended for another six months; and

• the UA PTO must receive a request for supplementary protection within six months either as from the date of publication of information on issuing a patent or as from the date of the first market authorisation in Ukraine (whichever is later).

Prior to 16 August 2020, right-holders could also obtain an extension of a patent in full, unlike an SPC that is limited to protection of a specific medicinal product.

Due to the significant change made to the Patent Law on 16 August 2020, there is currently a lacuna in the law because the holders of patents obtained long before the above date have, in fact, lost the right to obtain SPCs for their inventions. Court cases to restore the right to obtain an SPC are ongoing.

During examination of an application for invention, any person may submit a reasoned pre-grant opposition. Such pre-grant opposition shall be filed with the UA PTO within six months as from the application’s publication date in the Official Bulletin. This term may not be renewed or extended. An official fee should be paid for filing an opposition. The UA PTO sends an opposition to the patent applicant.

A patent applicant may file a response to such opposition within two months as from receiving the notification of opposition from the UA PTO. In addition, an applicant may either attempt to refute an opposition or amend/withdraw the patent application.

The results of consideration of an opposition are recorded in the motivated examiner’s opinion on an application. The UA PTO sends its decision and the examiner’s opinion to the person who filed the opposition.

After information regarding the patent application is published, any person may also file their observations on whether the invention complies with the patentability requirements. No filing fee is required for filing such observations. The UA PTO sends an observation to the applicant.

An applicant may appeal refusal to grant a patent to the Chamber of Appeals of the UA PTO or to the courts within two months, either as from receipt of the refusal or as from receipt of copies of materials opposed to the application. The official fee shall be paid for filing an appeal. An applicant may also appeal a decision of the Chamber of Appeals to the courts within two months as from the decision date. Subsequently, a decision of a first instance court may be appealed to the Court of Appeals and, further, to the Court of Cassation.

The intellectual property rights to an invention/utility model shall expire on the first day of the year for which the fee has not been paid. However, the Patent Law provides for a grace period of 12 months during which a patent holder may still pay the fee. In this case, the annual fee amount is increased by 50%. Upon payment of the fee, validity of intellectual property rights to an invention/utility model is restored.

After a patent is granted, a holder may at any time waive the rights confirmed by the patent in whole or in part within the published claims. For this purpose, a patent holder submits a respective request with the UA PTO.

A partial waiver may occur through, inter alia, introducing amendments to an independent claim. However, such amendment may only reduce rather than increase the scope of legal protection confirmed by a patent.

The UA PTO examines a new edition of claims for compliance with the requirements of the law. An official fee is paid for such examination.

Amendments to the claims take effect from the date of their official publication.

A right-holder may use a variety of legal mechanisms to protect its intellectual property rights.

Before filing a claim for protection of intellectual property rights with the court, a right-holder may send a cease and desist letter to an alleged infringer. Sending such a letter is not a prerequisite for filing a suit but can sometimes help to avoid litigation. The demands in the letter usually include ceasing the infringement, refraining from infringing the rights in the future, and/or recovering damages.

According to the Commercial Code of Ukraine, a recipient of such a letter must respond within one month. If a response is not received or its content does not satisfy the demands of a right-holder, the latter may send a repeated letter or file a lawsuit.

A patent holder may protect their rights by asking the court to apply a preliminary injunction (PI), which may include a variety of actions depending on the substance of an infringement. For example, the court may apply a PI by prohibiting the relevant authorities from granting a marketing authorisation for a potentially infringing product or introducing any changes into the pharmaceutical registration dossier.

In a motion for a PI, a patent owner should provide the court with sufficient evidence confirming that there are reasonable grounds to believe that infringement is taking place, and that failure to apply a PI will create obstacles in enforcing a court decision or make it impossible.

The court should consider a motion for a PI within two days as from its filing. Rulings on PIs enter into force immediately.

A patent holder may file a claim demanding the termination of intellectual property rights infringement, withdraw from the turnover objects infringing intellectual property rights, recover damages/lost profits, etc.

Jurisdiction of the dispute depends on the parties: if individuals are involved as parties to the dispute, the civil courts shall consider the case; and if only legal entities are involved, the commercial courts will be appropriate.

The Criminal Code of Ukraine envisages criminal liability for infringement of rights to an invention/utility model if a suffering party incurs damages in an amount exceeding approximately USD670.

A right-holder may record its patents with the Customs Register. If a customs officer reveals goods suspected of infringing intellectual property rights, customs clearance of such goods is suspended, and a right-holder shall be notified thereof. The latter may bring a court action for confiscation and destruction of such goods, and, before an enforceable court decision is taken, request a PI to suspend customs clearance.

Should technical information considered a commercial secret be unlawfully collected, disclosed and/or used, the owner of the commercial secret may file a complaint for protection from unfair competition with the Antimonopoly Committee of Ukraine to terminate an infringement and impose a fine thereon.

Post-grant oppositions are available with regard to patents in Ukraine. Such opposition may be filed with the Chamber of Appeals of the UA PTO within nine months as from the date of publication of a patent for an invention in the Official Bulletin or within the entire term of validity of a patent for utility model (or even after these rights are no longer valid).

Any person through a patent attorney may file a post-grant opposition. The respective official fee shall be paid. The proceedings before the Chamber of Appeals of the UA PTO are adversarial, and parties may submit evidence to substantiate their position. Post-grant opposition shall be considered within four months, which may be extended for another two months at a party’s request if the extension fee is paid, and may also be stayed for no more than two months due to reasons envisaged by the law. The Chamber of Appeals’ decision may be challenged through the court within two months as from its receipt by a party.

Any interested person may apply to the court with a claim demanding to invalidate a patent on the grounds of its non-compliance with the patentability conditions or on another ground set forth by the law.

The litigation is adversarial, where, in addition to other evidence, parties or the court normally engage technical experts to opine on those matters requiring specific knowledge. Depending on whether participants are individuals or legal entities, a case may be heard in either civil or commercial court.

A legitimate interest should be proved to file an action. A statute of limitations that generally constitutes three years should not be missed. According to the Supreme Court, the statute of limitations period begins from the moment when a given conflict arose in the market rather than from the date of publication of the patent being challenged.

The grounds for compulsory licensing established by the Patent Law are as follows.

• If a patent holder does not use, or does not use sufficiently, a patented invention for three consecutive years, the matter shall be decided by the court, and the burden of proof regarding adequate reasons for such non-use lies upon a patent holder; prior to filing the claim, a plaintiff shall approach a patent holder, and only after getting its refusal may the court action be commenced.

• In the case of dependent inventions – when a person seeking a licence holds a patented invention which is both (i) dependent on the other invention and (ii) may not be used without infringing the respective patent.

• The Ukrainian government may allow a compulsory licence to ensure public health, national security, environmental safety and other public interests.

The High Court of Intellectual Property was established in 2017 to consider IP cases and serve as both first and appeal instances. It has not started its operation yet due to ongoing judicial reform and IP cases are currently considered by the commercial, civil, administrative and criminal courts.

The commercial courts consider matters between legal entities, while cases involving individuals are normally considered by the civil courts. Administrative courts consider cases against state authorities. The venue of a dispute mostly depends on the defendant’s location. Criminal IP cases are considered by the criminal courts.

The appellate court shall be in the region where a respective first instance court resolved an IP case.

The Supreme Court serves as a cassation instance; however, not every case may qualify for a cassation consideration because of "cassation filters" introduced by the procedural codes. This is decided on a case-by-case basis at the stage of commencing cassation proceedings.

See Courts with Jurisdiction for discussion of the High Court of Intellectual Property.

In addition, parties to a contract may agree to transfer their dispute for resolution by a particular arbitral tribunal, having a location either in Ukraine or abroad. That is, only patent disputes arising from contracts may be resolved by a dispute resolution body other than a court.

The Ukrainian arbitral body is the International Commercial Arbitration under the Ukrainian Chamber of Commerce and Industry, located in Kyiv.

The Ukrainian law does not establish a compulsory pre-court dispute resolution attempt. This is, however, a recommended step for a party planning to commence a court proceeding for the sake of proving to the court the unscrupulous behaviour of a defendant.

The Ukrainian procedural codes allow self-representation of parties to a case. In legal entities, a director or other specifically empowered person may serve as a representative in court proceedings. Otherwise, a party may only be represented by an attorney at law.

The effective law provides for interim injunctions, and this procedural instrument is actively used by parties in patent cases.

The interim injunction may be granted if failure to take such a measure may significantly complicate or impede enforcement of a court decision or effective protection or restoration of an infringed right/interest of a plaintiff, and for other reasons, defined by law.

The motion for an interim injunction may be filed before filing a claim or at any stage of court proceedings. Measures, which may be applied, include:

• a prohibition from taking some actions (for example, prohibiting relevant authorities from proceeding with granting a potentially infringing marketing authorisation or introducing changes into the registration dossier);

• suspension of customs clearance of goods containing objects of intellectual property rights; and

• other measures prescribed by law.

The motion may be considered by the court ex parte within two days as from the date of its filing. In some instances, a court may summon an applicant for providing additional arguments and/or evidence. In exceptional instances, a court may schedule a court hearing and summon all the parties to consider such a motion.

A patent owner should provide the court with sufficient evidence confirming that there are reasonable grounds to believe that infringement takes place and that measures to be applied are adequate and commensurate with the claims.

A ruling on interim injunction enters into force immediately, and an appeal against such a ruling does not suspend its enforcement.

If a potential defendant spots a motion for an interim injunction immediately after its filing, they may file a motion for consideration of that interim injunction in a court hearing before all the parties. Such a motion may increase the chances of the defendant being engaged in the interim injunction consideration process. A potential defendant may file objections against an interim injunction, which shall be considered by the court.

In addition, the effective Ukrainian law envisages a mechanism for securing the rights of a person against whom an injunction is applied as a counter-collateral. Namely, a court may require an interim injunction’s applicant to deposit an amount to compensate potential damages that may be incurred by a defendant as a result of an interim injunction. Counter-collateral is usually provided by depositing funds in the court’s deposit account in the amount determined by the court.

According to the Civil Code of Ukraine, the general statute of limitations for applying to the court is three years. This term applies to all claims arising out of patent infringements.

The statute of limitations period commences on the day when a person learned or could have learned about the infringement of its right or about an infringer.

According to the Supreme Court, commencement of the statute of limitations in intellectual property disputes may be related to the beginning of the relevant conflict or competition in the market rather than to the date of publication of information on registration of the intellectual property right(s) in question.

Ukrainian legislation provides several tools for obtaining evidence from an opponent or third parties in intellectual property disputes.

Any person may request public information from public authorities. If the requested information is not confidential, an addressee shall provide a comprehensive response to a request within five working days.

Also, any person may apply to the UA PTO with a request to provide copies of the application case file regarding any intellectual property object. There is a fee for providing the said copies.

An attorney at law, being a representative of a person concerned, may also make attorney’s requests to any person in order to gather evidence for the trial. Responding to an attorney’s requests is mandatory (or otherwise requires providing a detailed justification for the inability to disclose information or documents) and must be made within five working days.

Effective Ukrainian procedural law envisages the mechanism for securing evidence, in particular, by demanding it from any person within the pending court proceedings.

Measures to secure evidence shall be taken if there is reason to believe that evidence may be lost in the future or that its collection or filing may subsequently become impossible or difficult.

An application for securing evidence may be filed with the court either before or after filing a statement of claim. If such an application is filed before filing a statement of claim, an applicant should file a statement of claim within ten days as from the date of the court ruling on securing evidence. Failure to file a statement of claim within the specified period, as well as the return of a statement of claim or refusal to commence proceedings, will lead the court to revoke its ruling on securing evidence no later than the next day after the expiration of the said period.

A ruling on securing evidence is binding on any person to whom it is addressed.

According to the effective procedural law, a statement of claim shall include the content of the claims; ie, the remedy that a plaintiff requests a court to apply, a statement of the circumstances in which the plaintiff substantiates their claims, and evidence to support them, and other information. A claim for protection of intellectual property rights is no exception.

In a statement of claim, a plaintiff shall describe in detail the cause of action and provide all available evidence. Submission of evidence at a later stage of the trial is allowed only if a plaintiff proves good reasons for failure to submit evidence along with the statement of claim.

The Ukrainian legal system does not envisage representative or collective actions.

It is possible, however, for several plaintiffs to jointly file a claim, if:

• the subject matter of a dispute concerns the joint rights or obligations of several plaintiffs or defendants;

• the rights or obligations of several plaintiffs or defendants arose on the same grounds; and/or

• the subject of the dispute is homogeneous rights and responsibilities.

During a patent dispute consideration, a defendant may allege abuse of the right to sue by a plaintiff; however, in practice, courts rarely apply the respective procedural consequences of abuse of rights, and the relevant jurisprudence is not yet well-developed.

Unfair actions in the market may be considered a violation of the Law on Protection against Unfair Competition. The Antimonopoly Committee of Ukraine or its territorial branches shall consider such cases and impose fines on the infringers.

In cases for termination of intellectual property rights infringement, a plaintiff may be a patent holder or its licensee directly granted with a right to initiate court proceedings against intellectual property rights infringements. Ukrainian law does not require such a licence agreement to be officially registered.

To substantiate one’s standing for applying to the court, one shall submit a copy of a document confirming one’s intellectual property right, or the respective extract from the register, or a licence.

In this category of cases, a defendant is a person whom a patent holder/licensee considers an infringer. Depending on the claims in a dispute, public authorities may be involved as co-defendants, such as the Ministry of Health of Ukraine, a state enterprise (eg, the State Expert Centre of the Ministry of Health of Ukraine).

Ukrainian legislation does not explicitly distinguish between direct and indirect infringement.

The Patent Law provides that any encroachment on a patent holder’s rights is considered an infringement, which entails liability. Therefore, at the request of a patent holder or a licensee, such infringement must be ceased, and an infringer is obliged to recover any damages caused to a patent holder by such infringement.

Courts will assess a fact of infringement in each given case based on evidence provided by parties and the courts’ own convictions.

According to the Ukrainian law, a plaintiff bears the burden of proof with regard to its right’s infringement. The same rule applies to cases regarding process patent infringement.

The Patent Law envisages that a process under a patent is considered used if each feature included in an independent claim or an equivalent thereof is used. Usually, such use is proven by expert reports either filed by a claimant along with its statement of claim or by a forensic expert report.

The Patent Law, however, stipulates that any product, manufacturing of which is protected by a patent, in the absence of evidence to the contrary, shall be considered manufactured with the use of such process, provided that at least one of the following two requirements is met:

• such product is new; and

• there are grounds to believe that such product is manufactured using a protected process, and a patent holder is unable by reasonable effort to determine a process used in the manufacturing of such a product.

In this case, the burden of proof that manufacturing a product, in fact, differs from a patented process rests with the person who is alleged to have infringed the patent holder’s rights.

The Ukrainian legal system does not provide for separate regulation when an allegedly infringing process is practised outside Ukrainian jurisdiction.

Under the Patent Law, the scope of legal protection is determined by patent claims. The interpretation of claims is carried out within the specification of the relevant invention/utility model and corresponding drawings.

Ukrainian courts are keen to make use of expert reports while determining facts around the use of a certain invention/utility model and establishing the circumstances of a patent infringement. Experts usually assess both direct and equivalent use of the features of an invention.

For assessing equivalent use, the following conjunctive criteria are to be taken into account by an expert:

• the essence of the invention/utility model is not changed when replaced by an equivalent feature;

• the result achieved by application of the invention/utility model is not changed when replaced by an equivalent feature; and

• the means to replace a feature with an equivalent one are known.

If any of the above criteria is not present, replacing a feature of the invention/utility model cannot be considered equivalent, and, accordingly, there is no reason to claim patent infringement.

The prosecution history may be taken into account by an expert conducting expert examination, however, it is not obligatory, and the final interpretation of the scope of patent protection is made based on the granted claims.

If a patent holder files an infringement claim, a defendant may develop one or several of the following defence strategies.

Under the Ukrainian law, a patent holder shall prove that a defendant used every feature included in an independent claim of an invention/utility model or a feature equivalent thereto.

At the same time, a judge should normally engage experts to opine on any technical matters requiring specific knowledge. Any party to a case, including a defendant, may also file a party-engaged expert report to confirm non-infringement. Such a party-engaged expert report will have the same evidential value in the court as the one drawn up upon request by the court.

A defendant in patent infringement case may either file a counter-claim or file a separate lawsuit against a patent holder for patent invalidation. In such a case, a defendant should prove inconsistency of invention/utility model with the patentability conditions.

If a separate lawsuit for patent invalidation is filed, the respective patent infringement proceedings may be stayed until the patent invalidation case is resolved. However, such suspension of proceedings depends on the matter and the judge’s opinion.

In 2020 the Patent Law was amended with the Bolar provision, which in Ukraine has a rather limited scope of application.

Namely, importation of goods, manufactured using an invention/utility model, into the customs territory of Ukraine for research conducted to prepare and submit information for marketing authorisation of a medicinal product is not considered an infringement of a patent holder’s rights.

If relevant, such provision may be used by a defendant in an infringement proceeding; however, at the moment, respective jurisprudence is not yet well-established.

Under the Patent Law, the grounds for compulsory licensing are as follows.

• If a patent holder does not use/does not use sufficiently a patented invention for three consecutive years – in this case, the matter shall be decided by the court, and the burden of proof with regard to providing adequate reasons for such non-use lies with the patent holder; prior to filing a claim, a plaintiff shall approach a patent holder, and only after having the grant of a licence refused may they commence a court action.

• In case of dependent inventions – when a person seeking a licence holds a patented invention which is both (i) dependent on the other invention and (ii) may not be used without infringing the other patent.

• The Ukrainian government may allow a compulsory licence to ensure public health, national security, environmental safety, and other public interests.

The court shall assess the sufficiency of use depending on the circumstances of a given case. As some doctrinal sources assume, the "insufficient use" may be described as some minor use of an invention, which is characterised by both the volume of industrial use (almost not used in the production process of a patent holder or third parties) and the period of such use (a short period).

Each of these strategies may be used by a defendant in an infringement proceeding if circumstances allow.

The Patent Law provides for prior use rights, according to which any person – who, before the date of filing an application with the UA PTO or, if priority was claimed, before the date of its priority, in good faith used in Ukraine a technical solution identical to the claimed invention/utility model, or made significant and serious preparation for such use – retains the right to continue such use free of charge or to use an invention/utility model, as implied by the preparation. Prior use rights are limited to the amount of such use as of the date of filing a relevant application with the UA PTO.

The Patent Law also envisages some other circumstances under which use of a patented product or process will not constitute an infringement of a patent, among which are:

• use of a patented product or process for non-commercial purposes, for scientific purposes, or experimentally; and

• manufacture of a product or medicinal product containing a product with the use of a patented invention, which obtained supplementary protection, for export to third countries and for conducting other actions if necessary for the manufacture of a product or medicinal product for export to third countries.

Ukrainian procedural law provides that an expert report is a separate piece of evidence, assessed by a court along with other evidence in the case file, and has no prevailing value over any other evidence. An expert is a person who has special knowledge in a certain field. In patent cases, experts are normally engaged to opine on matters requiring specific knowledge because a judge is not entitled to establish circumstances where it has no such specific knowledge (as a rule, Ukrainian judges do not have specific knowledge regarding inventions/utility models).

Expert reports may be either party-engaged or requested by the court. An expert should be informed of the criminal liability for providing a knowingly false report. An important aspect in assessment of an expert report is, in addition to its validity on the merits, its compliance with all the requirements of the effective procedural law. Both circumstances may affect admissibility of the expert opinion.

There is no separate procedure for construing the terms of patent claims in Ukraine. This is normally performed by an expert who opines in an infringement or invalidation case.

Ukrainian procedural law does not envisage a system by which a court can seek or receive third-party opinions (amicus briefs). All statements are usually made by parties to a case. When necessary, a court may request certain information or documents from any third parties.

A claim for invalidation of a patent may be filed if an invention/utility model does not meet the patentability conditions.

Also, a patent may be invalidated if:

• there are features in the claims of a granted invention/utility model that were not present in the respective application;

• state registration of an invention/utility model was conducted in violation of third parties’ rights; and/or

• the procedure for patenting an invention/utility model was carried out in violation of the Patent Co-operation Agreement.

To file a claim for the invalidation of a patent, it is usually necessary to prove that a plaintiff has a legitimate interest to file a lawsuit. In order to prove such circumstances, a plaintiff may use, for example, any evidence confirming infringement of the plaintiff’s rights by a patent being challenged or the inability to receive market authorisation of a medicinal product that is in conflict with a disputed patent.

A patent may be recognised as invalid in whole or in part. The latter is done by excluding independent claims, excluding one or more independent claims along with dependent claims, or by amending independent claims, provided that such exclusions and/or amendments reduce the scope of legal protection granted by the patent.

At the same time, Ukrainian legislation does not provide for the invalidation of a patent in respect of solely dependent claims.

A patent holder may at any time (including, during revocation/cancellation proceedings) waive its patent rights fully or in part by filing a respective request with the UA PTO. However, in such a case, the UA PTO shall conduct an examination of a new edition of the claims as to their compliance with the patentability conditions.

If such amendments were introduced during pending court proceedings, parties and/or the court may decide on partial waiver of a suit, partial satisfaction of a suit, or waiver of a suit in full, depending on specific circumstances and the scope of amendments.

Revocation and infringement may be heard together during the court case, the second being filed as a counterclaim. However, there is no rule explicitly stating the need to consider both claims in the same proceeding.

Such claims may also be heard separately in different proceedings if a defendant does not initiate a counterclaim within the patent infringement proceeding. If such claims are heard separately, a court may suspend one of the proceedings until the decision in the other enters into force, and vice versa.

Ukrainian procedural law sets general rules for proceedings in all matters, including intellectual property cases. There are some differences between civil and commercial courts since those are regulated by separate procedural codes. For example, the Code of Ukraine on Commercial Proceedings explicitly prohibits considering intellectual property cases under a simplified procedure. At the same time, the Code of Ukraine on Civil Proceedings does not set forth such a restriction.

The Code on Commercial Proceedings envisages that intellectual property cases are to be considered by the High Court of Intellectual Property, which has not yet started its operation due to ongoing judicial reform.

While both procedural codes establish a one to three month term for case consideration per instance; practically, a typical timeline of the proceedings in intellectual property cases will depend on the jurisdiction in question. In commercial courts, consideration of a case may take several months per individual instance, while in civil courts cases can be considered for years. That is due to the overload of civil courts and the lack of judges.

Intellectual property cases usually require involvement of an expert having specific knowledge on the matter. Such an expert may be summoned to the court hearing to provide additional explanations regarding its expert report.

The Code on Commercial Proceedings envisages that intellectual property cases are to be considered by the High Court of Intellectual Property, which shall consist solely of judges specialised in intellectual property cases. As mentioned at 2.3 Courts with Jurisdiction, the Court, though established in 2017, has not started its operation yet due to ongoing judicial reform.

Currently, intellectual property cases are considered by all judges. The judges typically do not have a technical education, being qualified only in law. For establishing circumstances requiring specific knowledge, attested experts are usually engaged.

The parties do not have an influence on who the decision-maker will be since the claims are distributed among judges by an automated system at the moment of filing with the court. However, a party may challenge a judge if there are doubts over their impartiality during a case consideration.

Ukrainian procedural law envisages a procedure for the settlement of a dispute with the participation of a judge. Such a procedure may be initiated by the parties to a case and may be commenced only once per case consideration.

During the settlement procedure, court consideration is suspended. A judge conducts a series of both open and closed consultations with parties, and any information disclosed in such consultations is strictly confidential.

The settlement procedure may conclude in a settlement agreement or with continuing case consideration.

The parties may also conclude a settlement agreement at any stage of the court proceedings without commencing a settlement procedure, that is, without engaging a judge in settlement negotiations.

Filing an invalidation action may be a good strategy for a defendant in an infringement action. It may be done by filing a counter-claim in an infringement proceeding or a separate claim.

Practically, it is rather a questionable issue as to whether an infringement case should be suspended pending the resolution of a validity attack. Some judges deem this appropriate, while others do not, and there is no unequivocal practice with regard to this question in Ukraine. However, the chances of suspension may be high, depending on the specific circumstances of the matter.

Injunctive relief (the court ordering the defendant to cease certain actions and/or perform certain actions) is the most sought after remedy in infringement actions. The patentee usually complements demands for general injunctive relief prohibiting certain actions with related and more precise demands, such as the obligation to withdraw the goods in question from turnover or the invalidation of marketing authorisations of medicinal products.

The Patent Law allows claims for monetary damages (actual damages suffered by the patentee and lost profits of the patentee) for infringement; however, practically, those are rarely sought given the difficulties in proving their amount. No enhanced or provisional damages are allowed.

The court has minor discretion in ordering remedies – the plaintiff determines every demand and the court may grant it fully, in part or not at all, but is not allowed to go beyond the scope of the demands determined by the plaintiff.

Monetary remedies granted by the court are collected by the State Enforcement Service and/or by licensed private bailiffs. They may also enforce non-monetary remedies; the enforcement consists of official notification of the defendant to cease, refrain from or perform certain action ordered by the court. Failure to comply can result either in a fine imposed by the bailiff or in referral to law enforcement for prosecution of wilful failure to enforce the court decision.

There are no different types of remedies for different technical intellectual property rights. All patents for inventions/utility models as well as commercial secrets provide for the same remedies.

A judgment of a first instance court on merits is not enforceable until the 20-day term for filing an appeal expires or until the Court of Appeals considers an appeal. Therefore, there is no need for a stay of enforcement at the appellate stage.

The judgment becomes enforceable immediately upon its review by the appellate court or upon expiration of the term for filing an appeal. If a cassation appeal is filed, the Supreme Court may grant the stay of enforcement on a participant’s motion or its own initiative.

There are no special provisions concerning the appellate procedure for intellectual property rights – appeals in IP cases are heard under general rules of appellate review as per the respective procedural code (Commercial or Civil).

An appellate court may review both the facts of the case and the application of law. It considers evidence related to arguments presented in the appeal and the response to the appeal. Evidence not filed with the court of first instance may be accepted only in exceptional situations. If the appellate court finds that the first instance court erred in matters of fact or law, it may cancel the first instance judgment on merits and issue a new judgment.

Supreme Court review is limited to matters of law. If the Supreme Court finds that the lower courts erred in applying the law, it may cancel their judgment(s) on merits and issue a new judgment based on facts determined by the lower courts. If it finds that the lower courts erred in the determination of facts, it may cancel their judgment(s) and remand the case to the first instance court or appellate court for reconsideration on merits.

As per the procedural codes (Commercial and Civil), costs of litigation consist of the court fees, payable to the state budget for filing a lawsuit and certain motions, and litigation-related expenses. These comprise:

• attorney’s fees, including fees for representation before the court and other case-related legal services, in particular preparation of the case for consideration, collection of evidence;

• expenses related to the engagement of witnesses, experts, specialists and interpreters, as well as to forensic expert examination;

• expenses related to requesting evidence from other persons, inspecting the evidence at its location and securing the evidence by the court; and

• expenses related to other procedural actions necessary for consideration of the case or preparation thereto.

Any litigation-related expenses from the above first three categories, except for forensic expert examination, can arise before filing a lawsuit. Aside from them, other costs arising before the lawsuit is filed can also be considered litigation-related expenses if they meet "the necessary for consideration of the case or preparation thereto" criterion.

In view of the above, most of the recoverable costs arising before filing a lawsuit will be evidence-related. Costs for cease and desist letters may also be recovered, but this is open to challenge as they are not "necessary" for the case. Any pre-litigation legal analysis needs to be directly related to a specific lawsuit for its costs to be recoverable.

The court fee for commencing proceedings is calculated depending on the nature of the demands in the claim.

If the demands are monetary, the court fee is dependent on the amount of money (or the value of the property) claimed: 1.5% of that amount (value), but no less than approximately USD75 and no more than approximately USD26,000.

If the demands are non-monetary (invalidation of a patent, termination of an infringement, ordering to perform a certain action, etc), there is a fixed court fee per each non-monetary demand: approximately USD75.

The structure of litigation costs is detailed in 8.1 Costs before Filing a Lawsuit. In general, the litigation costs are paid by the losing party or they are split proportionally if the claim is granted in part.

Each party files a preliminary estimate of its costs with its first statement on the merits, else the court may deny recovery of all costs save for the court fees. The final amount of costs to be recovered is determined based on evidence (agreements, invoices, etc) provided before the parties’ closing arguments or no less than five days after the decision on the merits.

In the determination of the final amount of costs to be recovered, the court considers relevance, proportionality, and reasonableness of costs, as well as the party’s positive or negative behaviour (abuse of its rights, attempts to settle the case before or during the trial, etc).

It must be noted that Ukrainian judges are very reluctant to order costs recovery and will likely use any procedural defect in a legal position or evidence provided by the recovering party to deny recovery. It is also common for them to essentially decrease the attorney’s fees, even if the latter are supported by proper evidence.

Alternative dispute resolution is not a common way of settling an intellectual property case and is not common in Ukraine. Effective law provides for two kinds of ADR procedure:

• settlement of dispute with the participation of the judge; and

• mediation.

This procedure may be initiated during pending court proceedings. It is governed by the Code of Ukraine on Commercial Proceedings and the Code of Ukraine on Civil Proceedings.

If the parties agree, the judge may resort to this procedure before consideration of the case on merits begins. The judge stays the proceedings and commences a series of confidential meetings with the parties, which may be joint (with all parties present) and closed (only one party is present). The judge will inquire about the parties’ positions, possible settlement options and may offer settlement options of their own. In closed meetings, the judge may also draw the party’s attention to relevant jurisprudence. In no case is the judge allowed to opine on the evidence in the case file or provide legal advice to the parties.

The term for settlement of dispute with the participation of the judge is no more than 30 days and may not be extended. This procedure ends if:

• either party files a respective statement;

• the 30-day term expires; or

• the judge finds any party attempting to delay negotiations.

The procedure may not be prolonged or started over, and the ruling to finish the settlement may not be appealed. The end of the procedure also causes the transfer of the case to another judge.

If the procedure bears fruit, it may end with the one or both parties undertaking respective actions as agreed between them (settlement agreement, motion to leave the claim without consideration and not issue judgment on the merits, withdrawal of the claim, or admitting the claim).

Mediation

This procedure is governed by the Law of Ukraine "On Mediation". It is possible before filing the lawsuit and/or at any stage of the proceedings, including the stage of enforcing court decision.

Mediation is voluntary and confidential. It is conducted by an independent, neutral, non-biased mediator, whose job is to help the parties to communicate, negotiate and reach an agreement. They are not allowed to:

• combine the mediator’s function with that of any other participant in the conflict;

• provide the parties with consultations and recommendations on the decision on the merits of the dispute;

• make such a decision; and

• be a party’s attorney in the same case in which they have acted as mediator.

A mediator may perform their function for a fee or for free. The parties may choose the mediator and determine the relevant matters, options for settling the conflict, contents of a settlement agreement, etc. A person must pass training and obtain a certificate to be eligible for the mediator’s role, and must follow the rules of professional ethics. 

Mediation is based on the oral or written mediation agreement concluded between the mediator and the parties. If successful, it ends with an agreement detailing mutually agreed obligations, terms and conditions of their fulfilment, and the results of a failure to fulfil those terms and conditions or improper fulfilment of them. Mediation ends:

• if no agreement is reached;

• with the expiration of its term;

• if any party or mediator declines to further participate in mediation or is unable to do so due to death, dissolution, incapacitation, etc; or

• for any other reason stipulated in the mediation agreement.

If the parties agree to initiate mediation during court proceedings, the hearing may be adjourned within procedural terms of case consideration. The parties may file a joint motion to stay the court proceedings for the period of mediation, in which case the court is obliged to stay the proceedings for a maximum of 90 days.

Unless the law stipulates otherwise, agreement on assignment of IP rights shall be made in writing, otherwise it shall be considered null and void.

Registration of the assignment agreement with the UA PTO is obligatory with regard to patents. However, registration of commercial secret assignment agreements is not obligatory.

The parties shall determine a specific object of IP rights to be assigned (secret technical information, patent, etc) and specific rights to be assigned. Provisions of the assignment agreement which lead to a deterioration of the situation for the creator of respective objects compared to provisions of law, or limiting it in creating other objects, shall be deemed null and void.

Assignment of IP rights shall not affect validity of any licences issued with regard thereto.

The procedure for assigning an IP right depends on whether the assignment needs to be registered. If it must not, the procedure consists of executing the agreement. If it must, an original copy of the executed assignment agreement has to be provided to the UA PTO and a respective official fee (about USD66 per one IP object) should be paid to secure registration of the IP rights transfer.

Licensing an IP right may be done either through a licensing agreement or via a licence as a separate unilateral written document. There is no mandatory registration of licensing agreements or licences with the UA PTO, though it may be done upon the request of the licensor or the licensee.

A licensing agreement shall be executed in writing and contain:

• the type of licence (exclusive/sole/non-exclusive);

• the specific rights being licensed;

• the methods of use of the IP object in question;

• the territory for which the rights are licensed;

• the term for which the rights are licensed;

• the amount;

• the order;

• the terms for payment for the licence; and

• other provisions as the parties see fit.

If the type of licence is not indicated, it is deemed non-exclusive. If certain rights or methods of use are not mentioned in the licence, they are deemed not licensed. A right that was not valid at the time of licensing may not be licensed. If the territory is not defined, the licence is deemed to cover the whole territory of Ukraine.

An agreement may be executed for any term not exceeding the period for protection of licensed IP rights. If a certain term is not set forth in the agreement, it shall be deemed effective until the expiry of the licensed IP rights but for no more than for five years. If no party notifies the other to the contrary, after five years, it is extended for an indefinite time; however, any party may then dissolve the agreement with advance notice in six months (longer, if so agreed by the parties). Additionally, both licensor and licensee can dissolve the agreement if another party breaches its terms.

Licences as separate written documents are issued by the licensor unilaterally. It is less formal than the licensing agreement. However, it still must contain the type of licence (exclusive/sole/non-exclusive), the specific rights being licensed, the methods of use of the IP object in question, and the territory and term for which the rights are licensed.

A licensee may sub-license if a licence or licence agreement explicitly contains a respective provision.

Given that registration of licence agreements or licences is not mandatory, the licensing is done by executing an original copy of the licence or licence agreement.

Chambers and Partners