At a glance: patent enforcement proceedings in Uzbekistan

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?

At the moment, enforcing patent rights in commercial or civil courts in Uzbekistan is the only viable option for patent owners. The patent owner can bring a lawsuit against an infringer before a civil court (if the infringer is a natural person) or a commercial court (if the infringer is an entrepreneur or a legal entity) and seek to stop the unauthorised use of the patent, withdraw the infringing products from the market and destroy the products. The patent owner may also seek damages and a ban on the importation, storage and distribution of infringing products by the infringer and third parties.

Administrative liability for patent infringement was introduced in 2019, but administrative fines are somewhat low (approximately €100 to €580). The action can be brought by filing complaint with the Agency for Intellectual Property under the Ministry of Justice of Uzbekistan. The Code on Administrative Liability does not provide for the seizure and destruction of infringing products for patent Infringement.

Criminal liability for patent infringement is not available in Uzbekistan.

The relative lack of experience of local courts and enforcement authorities in the IP field make it challenging to enforce patents in Uzbekistan. There are no specialised courts for patent-related lawsuits in Uzbekistan.

Uzbekistan has recently revived its World Trade Organization accession process, so the situation is expected to change for the better in the coming years.

What is the format of a patent infringement trial?

Documentary evidence and expert testimony are of crucial importance. Each party has to provide relevant and sufficient evidence in support of its position in the case. Evidence can be introduced in the form of documents, oral testimony and physical objects, etc. Expert witnesses and reports play a vital role because judges are mostly lawyers who do not usually possess scientific or technical expertise. However, the courts are more inclined to take into account the opinions of experts from relevant state bodies, institutions or state-owned companies rather than the opinions of independent experts from private companies.

Cases are decided by a single judge in the first instance, by a panel of three judges at appellate or cassation instance, and by a panel of five judges in the case of a repeat cassation at the Supreme Court.

Patent-related trials in commercial courts usually last two to three months in the first instance and around the same amount of time at appellate or cassation instances, but it may take longer if the court needs to review additional evidence or the court experts’ written conclusions. The cassation stage can take up to one year. In total, it can take up to one to two years to reach the final decision.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The general principle of the court procedure in Uzbekistan is that each party to a dispute has to provide relevant, acceptable and sufficient evidence in support of its position in the case.

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 owner or an exclusive licensee can sue for patent infringement. The alleged infringer can at any time challenge the disputed patent before the Board of Appeal. The Board of Appeal’s ruling can then be challenged before an administrative court. The legislation in force does not allow for challenging patents directly before courts.

In 2019, the Board of Appeal of the Uzbek Intellectual Property Office (IPO) was brought under the jurisdiction of the Ministry of Justice. The Minister of Justice is now the Chairman of the Board of Appeal. This measure was likely introduced to minimise the IPO’s influence on the Board of Appeal’s rulings, and to ensure a more impartial review of appeals and observations.

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?

It is possible to file a lawsuit against multiple defendants, where some of the defendants only induce or contribute to the patent infringement. However, in this case the final court injunction could only be obtained against the infringer who actually assembles, stores, sells or otherwise distributes the final product or process that infringes the disputed patent.

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?

Yes, multiple parties can be joined as defendants in the same lawsuit. The multiple defendants in this case must be involved in infringing the patent directly, namely by manufacturing, importing, offering for sale, selling, distributing or storing an item with the aim of distributing the final patented product, including the product made by using the patented process.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Courts in Uzbekistan can accept any evidence of patent infringement, including the evidence related to the foreign activities of the infringer that contribute to the infringement in Uzbekistan.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

It is possible to bring a lawsuit against an infringer that uses equivalent features to those disclosed in a patent claim. The equivalence of a certain feature to the one in the patent claim is usually evaluated on a case-by-case basis based on written conclusions and expert evidence. However, there are no specific official guidelines, legislation or judicial decisions governing the scope of equivalents of a patent claim in Uzbekistan.

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 Uzbekistan there are no pre-trial procedures in a lawsuit, such as discovery of evidence. Both the civil and the commercial procedure codes provide for the possibility of obtaining evidence from an opponent and from third parties in order to prove infringement, damages and invalidity by filing a specific motion with the court that can issue a relevant ruling. Obtaining evidence from outside the country is only possible if Uzbekistan has signed multilateral or bilateral agreements allowing the exchange of information and evidence between the relevant state bodies and providing for the enforcement of respective court rulings (eg, the Commonwealth of Independent States countries).

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

On average, it takes around three to four weeks after filing a lawsuit for the first hearing to take place in a commercial court of first instance or in an appellate or cassation court after submitting an appeal. It usually takes two to three months to obtain the ruling of the first instance court or the appellate or cassation court. The first-instance ruling can be appealed within one month from the day the ruling was announced. A cassation appeal can be filed within one year from the day the appellate court's ruling was issued. Repeat cassation appeal can be filed either within one year from the day the appellate court's ruling was issued or within one month from the date of cassation court's ruling, whichever expires later. The repeat cassation stage itself can take up to three months.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Attorneys’ fees as well as other costs (eg, translations and court expert reports) will vary depending on the circumstances and complexity of the case.

If a patent owner wishes to claim damages, the court fees for filing a court claim will constitute 2 per cent of the total amount of claimed damages. If no damages are claimed, the court fee will be approximately €250 for each non-material claim (claims that do not require compensation for losses if the ruling is in favour of the patent owner). Official fees for appeals will be 50 per cent of the fees for filing the initial lawsuit.

On average, litigants should expect to pay between €10,000 and €30,000 to take a case through to a first-instance decision, and around the same amount for each of the appeal or cassation and judicial review stages.

Сontingency fees are not prohibited by law in Uzbekistan.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

A decision of the first-instance commercial court can be appealed before a higher court. The ruling of an appellate court can be appealed before the Supreme Court by filing a cassation appeal. Request for repeat cassation can be also filed with the Presidium of the Supreme Court. New evidence is allowed at the appellate stage.

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?

It depends on whether the patent owner has a dominant position or a monopoly in a market according to Uzbekistan’s Antimonopoly Committee, or if the patent owner otherwise violates the legislation in force.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Mediation can be attempted before the start of court proceedings. An out-of-court settlement during court proceedings is also acceptable as an alternative dispute resolution mechanism in Uzbekistan. Arbitration courts are available if a case involves a breach of patent-related contractual obligations and if the contract contains an arbitration clause.

Law stated date

Give the date on which the information above is accurate.

24 February 2021.