Precedent-Setting Victory: Mamunya IP's Legal Strategy Triumphs in Supreme Court

Our team developed a unique legal strategy that resulted in a precedent-setting victory in the Supreme Court regarding patent supplementary protection in Ukraine. The entire Ukrainian patent community had been awaiting the resolution of this dispute for over 2 years.

In 2020, amendments were made to the Law of Ukraine "On Protection of Rights to Inventions and Utility Models," introducing supplementary protection for inventions. This instrument was implemented in accordance with the Association Agreement between the EU and Ukraine and was intended to replace the mechanism of patent term extension. However, the law did not provide any transitional provisions regarding the deadline for filing a motion for supplementary protection. Previously, the term for filing such a motion was 19.5 years, but upon the changes to the law, it was reduced to 6 months. Patent holders who had not submit the motion before the new law came into effect effectively lost their right to obtain a supplementary protection due to this legislative flaw.

 One of such patent holders, our client, received a denial of supplementary protection due to missing the 6-month filing deadline. An absurd situation arose because, according to the provisions of the new law, our client should have submitted the motion several months before the draft law regarding the supplementary protection was even introduced to the Ukrainian Parliament.

Upon reconsideration of the case, the courts unanimously sided with our client, applying the law systematically. Ukraine may not violate its obligations under the Association Agreement and must ensure provision of supplementary protection under the specified conditions. The Supreme Court emphasized that "the plaintiff may not be deprived of the right to supplementary protection by introducing a new mechanism for implementing this right in accordance with the provisions of Article 27-1 of the Law, as the patent and the corresponding medicinal product of the plaintiff were registered before the entry into force of Article 27-1 of the Law."

The Mamunya IP team handling this case included lawyers Ilona Boliubash, Nataliia Badora, and Ihor Kharytonov, under the leadership of managing partner Oleksandr Mamunya.

Regarding this case, Oleksandr Mamunya stated, "The position of the Supreme Court proves that intellectual property rights are respected and can be effectively protected in Ukraine, which is extremely important in the context of our movement towards the European Union."

"Our legal position in this case was based on the principle of the rule of law, and the Supreme Court confirmed that the absence of transitional provisions due to a legislative mistake should not deprive the client of the right to implement their guaranteed right to obtain supplementary protection under Ukraine's international treaties," commented Ilona Boliubash.

We take pride in our team that is not afraid to tackle the most challenging issues and contributes professionally to the development of jurisprudence in the intellectual property sphere!

Resolution of the Supreme Court