At a glance: patent enforcement proceedings in Ukraine

Patent enforcement proceedings

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

Law stated date

Give the date on which the information above is accurate.

11 March 2021.