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Enforcement through the courts

At trial
What level of expertise can a patent owner expect from the courts?

The courts have limited expertise regarding the technical aspects of patent matters. Therefore, to rule on issues that require special knowledge, the courts rely on certified court experts, who provide opinions on relevant issues (eg, whether an invention was new or had inventive step at the date of filing of the application).

Are cases decided by one judge, a panel of judges or a jury?

At first instance, cases are usually decided by one judge, although a panel of three judges can be appointed to rule on complicated cases in commercial or administrative court proceedings. On appeal and in cassation court cases, a panel of judges decides cases.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist.

What role can and do expert witnesses play in proceedings?

The courts use certified court experts to decide on issues that require special knowledge. Experts either work individually or are employed by expert institutions. If no court expert has the required knowledge, another specialist in the relevant field may provide an opinion. Thus, experts are involved in most cases relating to patent rights. In addition, a commission of experts may be appointed to deal with complex issues.

The court will draw up the list of questions to be put before the experts; however, the parties to the proceedings can suggest questions to be included on the list. The courts cannot ask experts questions of a legal nature – those must be resolved directly by the court. Once an expert opinion is provided, the court will evaluate it as any other evidence. If the expert opinion is incomplete or unclear, an additional examination may be required. This additional examination can be entrusted to the same expert or a different one. The court may summon the expert to appear in court to clarify any questions that the court or parties have in relation to the expert’s opinion or issues raised therein. Where the court considers it necessary (eg, if the initial expert opinion raises concerns regarding its correctness or is not in line with the materials of the case), another court examination may be granted to obtain another expert opinion. 

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents is applied in Ukraine. In the context of establishing infringement, it is expressly provided that a product or process is recognised as being produced or applied with the use of the patented invention or utility model where every characteristic comprised in the independent claim or equivalent characteristic is used. 

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

The applicable procedural laws allow for preliminary injunctions. In commercial and common court proceedings, preliminary injunctions may be granted before the suit is filed. Injunctive relief may be requested if the claimant has reasonable grounds to believe that:

  • without it, the required evidence could not be filed;
  • an infringement has occurred; or
  • there is a real threat of infringement.

Injunction measures may include requesting or obtaining evidence, inspecting the infringer’s premises and seizing goods. In addition, for both commercial and common court procedures, injunctions may be obtained after a suit is filed if the court would find enforcement of a potential decision to be difficult or impossible without an injunction. Injunctions may include seizure of the defendant’s goods or a prohibition on the defendant taking certain actions. However, in practice, the courts are often reluctant to grant injunctions in patent disputes, other than to prevent assignment of a challenged patent.

How are issues around infringement and validity treated in your jurisdiction?

As long as a patent is valid, the owner is entitled to exploit and enforce its rights. In turn, the courts cannot revoke a patent (eg, in the course of considering an infringement case) unless a revocation suit is filed. Further, a defendant may file:

  • a counterclaim for patent revocation (where the jurisdiction is proper and a hearing of the case on the merits has not yet commenced); or
  • a separate revocation suit against the patent.

If a separate suit is filed (eg, where the cases are under the jurisdiction of different courts), it is likely that the initial suit will be suspended until the revocation suit is decided.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Ukrainian courts are not bound by decisions from other jurisdictions, even where they involve similar issues. This is because legal frameworks differ from jurisdiction to jurisdiction; therefore, different decisions may be reached on similar issues. Thus, although parties often submit foreign decisions to the court, the Ukrainian courts usually do not refer to those materials.

Damages and remedies
Can the successful party obtain costs from the losing party?

The applicable procedural laws allow successful parties to recover costs related to court proceedings from the losing party, including:

  • the official court fee;
  • the costs of court examination; and
  • attorneys’ fees.

However, due to both statutory requirements and the formal approach employed by the courts, no costs – other than the official fee and examination costs – are usually awarded. The requirements and practice regarding compensation of attorneys’ fees vary according to the type of proceeding. However, in all proceedings, costs cannot be awarded unless they were actually incurred by the successful party. Further, all payment requests must be confirmed by appropriate documentation (eg, the legal services agreement, the acceptance act or proof of payment). The courts tend not to award attorneys’ fees or reduce the amount considerably.

What are the typical remedies granted to a successful plaintiff?

In a patent infringement action, typical remedies granted to successful parties include:

  • a cease and desist order issued to the defendant; and
  • a prohibition on the defendant from conducting further infringements.

Damages are rarely awarded, as it is difficult to prove the legitimacy and the amount of damages caused.

How are damages awards calculated? Are punitive damages available?

Generally, damages include real damages (eg, the costs that a party incurred or must incur to resume the infringed right) and lost profits. Further, where an infringer received revenue in connection with the infringement, the lost profits to be reimbursed cannot be less than that revenue. That said, damages are rarely awarded in patent disputes. This is because the courts take a formal approach in respect of proving damages (eg, the mere fact that the infringing products have been sold is often not regarded as proof of damages). The courts may appoint an economic examination to obtain an expert opinion regarding the amount of damages due. Experts usually calculate damages based on the revenue received by the infringer. Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Where the court establishes that infringement has occurred – provided that the plaintiff has made an infringement claim in its suit – the defendant will be ordered to stop its infringing activities and be prevented from further infringement. Thus, permanent injunctions are embodied in court decisions where infringement is recognised.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

First-instance decisions are typically issued within one year; however, this timeline may vary considerably, depending on:

  • the essence of the dispute;
  • the field of technology concerned; and
  • the strategies taken by the parties to the proceeding.

The only opportunity for parties to expedite the process is to file materials (eg, evidence, briefs and motions) in a timely manner. At the same time, there are opportunities to delay the proceeding, which in most cases cannot be overcome.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Budgets vary considerably, depending on:

  • the nature of the dispute;
  • the field of technology concerned;
  • the strategies taken by the parties to the proceedings;
  • the questions put before experts; and
  • whether more than one expert examination is appointed.

However, litigants should reasonably expect costs of at least €15,000 where the case is relatively straightforward and no serious delays occur.

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