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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? According to the Protection of Rights in Inventions and Utility Models Law, the criteria for patentability are as follows:
- Novelty – inventions cannot be part of the prior art (ie, information that is public before the application date or the priority date, as applicable).
- Inventive step – inventions cannot be obvious to a specialist.
- Industrial applicability – inventions must be applicable for use in industry or other fields of activity.
Ukrainian law also provides for utility model protection, in respect of which only novelty and industrial applicability are required. Further, a utility model patent is granted without a patentability examination. Anyone may file a request for a utility model to be examined for patentability.
What are the limits on patentability? The Protection of Rights in Inventions and Utility Models Law provides that the following are patentable either as inventions or as utility models:
- products (devices, substances, strains and cell cultures of a plant or animal); and
- processes (methods) and new applications of known products or processes.
The following subject matter is not patentable as an invention or utility model:
- plants and breeds of animal;
- processes that are biological in nature and relate to plant and animal reproduction which do not belong to non-biological or microbiological processes;
- topologies of integrated circuits;
- industrial designs;
- discoveries, scientific theories and mathematical methods;
- methods of intellectual, business, organisational and commercial activity (eg, planning, financing, supplying, accounting, crediting, forecasting and rate setting);
- rules for performing bodily exercises, carrying out games, contests and public sales;
- designs and schemes for construction, building and territory planning;
- legends (eg, road signs, routes, codes and fonts), schedules and instructions;
- software; and
- methods for providing information (eg, tables, diagrams and graphics).
To what extent can inventions covering software be patented? Software as such cannot be patented. However, a process embodied in the software can be patented, provided that the patentability criteria are met.
To what extent can inventions covering business methods be patented? Business methods are not patentable.
To what extent can inventions relating to stem cells be patented? No express restrictions regarding the patentability of stem cells exist.
Are there restrictions on any other kinds of invention? No express restrictions regarding objects other than the aforementioned exist. However, a general provision stipules that an invention or utility model will be granted legal protection if it:
- is not contrary to public order or the principles of humanity and morality; and
- meets the criteria for patentability.
Grace period Does your jurisdiction have a grace period? If so, how does it work? Ukraine has a grace period. Information regarding an invention or utility model that is disclosed by the inventor or a person that received the information (directly or indirectly) from the inventor within 12 months before the application filing date or priority date will not influence the patentability of the invention or utility model. The burden of proof regarding the circumstances surrounding the disclosure rests with the person that requests the grace period.
Oppositions What types of patent opposition procedure are available in your jurisdiction? To oppose a patent application decision, an applicant must lodge a complaint before the appeals chamber – a special body within the State IP Service – within two months of receipt of the decision or copies of the materials opposed in the application (where the applicant has requested the materials in due course). However, as soon as a patent is granted, it can be revoked only by a court ruling, not by the appeals chamber.
Apart from oppositions, are there any other ways to challenge a patent outside the courts? No – only the courts have jurisdiction over patent revocation disputes.
How can patent office decisions be appealed in your jurisdiction? Patent Office decisions regarding a patent application can be appealed to either:
- the appeals chamber, by filing an opposition; or
- the administrative court, which has jurisdiction over revocations of decisions issued by public authorities.
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? On average, it takes from one and a half years to three years from the filing date to be granted a patent. However, this timeline depends on a number of issues, including:
- the field of technology concerned (eg, pharmaceutical applications usually take more time);
- when the request for examination was filed (this must be done within three years of the date of filing the application);
- whether any office actions are issued in respect of the application; and
- whether initial procedural deadlines have been met or extensions or renewals of the applicable terms have been requested (eg, a response to an office action must be filed within two months of receipt; however, applicants can request extensions of up to six months or renewal of the missed term within six months of the response being due).
For utility model applications, it usually takes around six to eight months to be granted a patent, as no substantial examination is conducted. An expedited registration, which takes around three months, is available for an extra fee.
Apart from drafting the description and claims, the budget for a patent application depends on:
- the number of independent claims that are subject to substantial examination;
- the application’s content, since a Ukrainian translation is required where the initial materials are filed in a foreign language; and
- whether any office actions are issued in respect of the application.
The budget for a patent application is roughly €5,000, if the application is relatively small, has one or two independent claims and raises no particular concerns during examination. However, costs vary depending on the specific situation and much larger budgets may be required.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? The most common and effective strategy is to file a patent infringement suit or, where patent rights are infringed by another patent with later priority, to file a suit for revocation of the infringing patent. To prevent the import of infringing products into Ukraine, a patent owner may apply for border measures. However, if Custom’s clearance of the alleged infringing products is suspended, patent owners must file suits before the court. As a rule, border measures are effective when the specific infringing products are identified in advance.
What scope is there for forum selection? According to Ukrainian law, disputes regarding patent infringements and revocations fall within the jurisdiction of the commercial or common courts, depending on the parties involved.
Where the parties to the proceedings are legal entities or private entrepreneurs, the dispute will be heard in the commercial courts. In such cases, the suit must be filed with the commercial court at the place (city or region) of the alleged infringement.
Where at least one party to the proceedings is an individual, the matter will be heard in the common court in the course of civil procedures. The suit must be filed with the common court at the place where the defendant, or one of the defendants, resides.
For patent revocation proceedings in both commercial and common court, suits must be filed with the court with jurisdiction over the defendant’s domicile. In a revocation action, the patent owner and the State IP Service are considered co-defendants.
In addition, where a foreign party is involved, Ukrainian law expressly provides for the exclusive jurisdiction of Ukrainian courts over disputes relating to the registration of IP rights that require issuance of a certificate or patent.
Pre-trial What are the stages in the litigation process leading up to a full trial? The plaintiff must first file a motivated claim that complies with the formal requirements listed in the procedural laws, along with (at least a minimum) evidence supporting its claims. Depending on the type of proceeding, the plaintiff may also need to send a copy of the claim to the defendants or provide copies to the court. These requirements must be fulfilled in order for the suit to be accepted.
As soon as the suit is accepted, the preparatory stage of the proceedings begins. In the course of the preparations, the judge may, among other things:
- consider whether other defendants should be included or whether defendants must be replaced;
- request information and documents from the parties or other persons; and
- assess the need for precautionary measures.
In administrative and civil court proceedings, preparations may also include a preliminary hearing.
In terms of the submission of evidence, the requirements differ depending on the type of proceeding. For example, in civil proceedings, parties must submit evidence before or during the preliminary hearing (if one is held) or before the hearing of the case on the merits commences (if no preliminary hearing has taken place), unless there is a valid reason for failing to submit the evidence by that time. In commercial court proceedings, no explicit restrictions exist; however, late evidence that is provided without a valid reason may be considered an abuse of procedural rights and therefore be declined.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The Ukrainian procedural laws provide for a substantial amount of formal requirements that can be used by defendants to delay proceedings, including:
- filing appeals against procedural court rulings; and
- failing to appear at court hearings and thereby forcing a postponement.
In most cases it is not possible to prevent delays, as they have a formal legal basis. In general, civil and administrative court proceedings provide more opportunities for delays than commercial court proceedings.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? The grounds for challenging the validity of a patent are provided in statute. A patent will be revoked under the following circumstances:
- The criteria for patentability are not met.
- The published claims include characteristics that were absent in the application as filed.
- The patent was issued under an application that infringed a third party’s rights.
At the same time, to apply to the court for revocation of a patent, the plaintiff must prove that the patent infringes its rights. Thus, evidence of a conflict that may lead to a potential infringement suit can serve as proof of a party’s right to apply to the court.
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.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? The right to appeal is a guaranteed procedural right and any first-instance decision, as well as certain procedural rulings, may be appealed. Appeals of first-instance decisions must be filed within 10 days of the decision being issued or received by the party, depending on the proceeding and the situation (eg, whether the party was present at the decision announcement), although this deadline may be extended where it is missed for valid reasons; the courts usually grant renewals freely. The length of the appeal process largely depends on whether an examination is appointed at this stage (eg, if an appealing party is dissatisfied with the expert opinion obtained at first instance and requests another examination), which is possible provided that the appeal court recognises the request as valid. If there is no examination, an appeal will usually take three to four months. Where an examination is granted, the appeal may take much longer – possibly a year or more.
A cassation may also be brought against an appeal court decision (or a first-instance decision if upheld by the appeal court). However, the cassation courts' scope is limited and allows only for the review of the application of law. The cassation courts are entitled – where they finds that the facts of the case were not duly established – to call for a retrial before the first-instance court or, in some cases, the appeal court.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? No other options exist, unless the parties have concluded an arbitration agreement.