International Patent Litigation in Ukraine

In Ukraine an infringement claim can be broughе both by a holder of the patent as well as its licensee. In the latter case the licensee can refer to court notwithstanding whether they are granted the rights under an exclusive, non-exclusive or a single license. The above persons may also file a claim jointly.

In the event a patent is held by (licensed to) several subjects any of them can sue the infringing party independently or jointly.

It is possible to join more than one party as a defendant.

A claim can be initially filed against several defendants (co-defendants). It is also provided for that a claimant may file a motion (subject to approval by court) for engaging a co-defendant(s) after the case has been opened but before the closing of preliminary proceedings (before the first hearing if the case is considered under simplified proceedings). Although, it is also possible to exercise such a right after the set-out deadlines in the event the claimant can prove that they did not know and could not have known about the grounds for involving such a co-defendant(s) before filing a lawsuit. Please note that at the request of a new defendant or a co-defendant, the proceedings can be restarted.

Court does not have powers to engage co-defendants under its own discretion, but only based on the referred motion.

It is possible to join suppliers or other parties as third parties to the proceedings before the end of the preliminary proceedings or before the first court hearing.  They can be involved in court proceeding both as third parties asserting independent claims (exercise all rights and bear all obligations of the plaintiff) and as third parties not asserting independent claims (if the decision in the case may potentially influence their rights and interests).

Claims for patent infringement are subject to general limitation period which is set at three years starting from the day when a person learned or could have learned of the infringement or of the infringing person.

There is no such requirement.

Despite that current legislation provides that intellectual property related cases (including arising from patent disputes) are to be considered by the Higher Intellectual Property Court, the latter does not yet function.

Thus, currently, patent litigation proceedings are brought in courts of either commercial or civil jurisdiction (depending on whether the dispute occurs between legal entities or private individuals). Invalidity claims may also be referred to an Appeal Chamber within the National Intellectual Property Authority (“NIPA”). Infringement and validity issues are not decided in the same proceedings.

Ukraine does not take part in the UPC.

There is no procedure established for application for a declaration of non-infringement per se. However, a defendant in a patent infringement case, can request in its objections to the initial claim that the court establishes non-infringement in its final decision.

Depending on (i) jurisdiction of the court (civil / commercial); (ii) procedure under which a case is being considered (general / simplified); as well as (iii) complexity and circumstances of a case, it takes different amount of time for a first hearing to take place, from couple of weeks to couple of months. The procedural codes usually establish a maximum term for a court to appoint the first preliminary hearing in a case (30 or 60 days), with a possibility to extend this term in the event the circumstances of the case require so. Further, Ukrainian legislation, similarly, to above provides for different terms for appointing the first hearing on the merits.

The above term may also differ in practice depending on a particular court’s workflow.

In the event a court decides to consider a claim under simplified proceedings, a hearing in a case may not be appointed at all. At the same time, the consideration of such a case lasts no more than sixty days from the date of opening the proceedings.

Similarly, to section 9 above, despite that terms for consideration of cases are limited by law, in practice patent infringement cases’ review does not meet those requirements and in fact may take from couple of months to several years until a first instance decision is adopted.

The long duration of case consideration also occurs due to frequent necessity to appoint conduction of expertise in this category of cases, which usually takes at least several months (sometimes years) to conduct. General practice is that proceedings are suspended for the period when an expertise is being conducted.

As mentioned above, generally, it usually takes from several months to several years for a patent infringement case to be resolved.

The judges are not required to have technical expertise. In instances where technical expertise is required courts appoint an expert examination.

Not applicable.

Any person can file for nullification of a patent to the Appeal Chamber within NIPA.

A patent can only be challenged in court by a person that can proof that the registration of the patent violates their rights and interests (inter alia, in the event of being sued for the patent infringement).

FRAND licenses are not provided for by the Ukrainian legislation.

A patent holder is obliged to grant permission (issue a license) to use an invention (utility model) to an owner of a later granted patent if the latter's invention (utility model) is intended to achieve a different purpose or has significant technical and economic advantages and cannot be used without infringing the rights of the owner of the earlier granted patent. Permission is granted to the extent necessary for the use of the invention (utility model) by the owner of the later granted patent. At the same time, the owner of the earlier granted patent shall have the right to obtain a license on acceptable terms for the use of the invention (utility model) protected by the later granted patent.

Also, for the purpose of ensuring public health, state defence, environmental safety and other public interests, the Cabinet of Ministers of Ukraine may allow the use of a patented invention (utility model) to a person designated by it without the consent of the patent owner. The terms of granting such permission by the government are set out in the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”.

If an invention (utility model), except for a secret invention (utility model), is not used or insufficiently used in Ukraine within three years from the date following the date of state registration of the invention (utility model) or from the date when the use of the invention (utility model) was terminated, any person who is willing and ready to use the invention (utility model), in case the owner of the rights refuses to conclude a license agreement, may apply to court for permission to use the invention (utility model).

If the patent owner does not prove that the fact of non-use of the invention (utility model) is due to valid reasons, the court shall decide to grant permission to the interested person to use the invention (utility model), determining the scope of its use, the term of the permission, the amount and procedure for payment of remuneration to the patent owner. At the same time, the right of the patent owner to grant permits for the use of the invention (utility model) is not limited.

Expert witnesses are often used in patent infringement cases. An expert may be questioned in court following conduction of an expert examination by the respective expert and preparation of an expert opinion.

A court appoints an expert examination at the request of a party to the case or on its own initiative if special knowledge is required to establish circumstances of a case. The appointment of an expert examination by the court is mandatory if both parties file a petition for the appointment of an expert examination.

A party may also submit an expert opinion drawn up at their request to the court.

A party filing a claim shall submit all the evidence in support of such claim together with the filing of the claim on the merits or substantiate why such evidence cannot be provided. Respectively the defendant may submit their evidence along with the statement of defence. Seizer of evidence may be ordered by court as further described in section 18 below.

Under general procedure a court may seize evidence if a party to the case is unable to provide evidence on its own, in such case the party has to file a motion to have the evidence seized by the court substantiating why the evidence cannot be collected by their own means and providing evidence in support of this.

There is also a special procedure for seizing evidence in intellectual property infringement cases. Upon a reasoned request of a party to the case, the court may request evidence in the form of information on the origin and distribution networks of goods or services infringing intellectual property rights or in respect of which there are reasonable grounds to believe that the distribution of such goods or provision of such services infringes intellectual property rights (i) from a person in respect of whom there are reasonable grounds to believe that such person infringes intellectual property rights; and/or (ii) from any other person in respect of whom there are reasonable grounds to believe that such person has offered, received, possessed and/or used the infringing goods or services for commercial purposes; or (iii) from any other person who has been indicated as being involved in production, manufacture or distribution of goods or provision of services infringing intellectual property rights.

Additionally, under general procedural provisions a court secures evidence if there are grounds to assume that the means of proof may be lost or that the collection or presentation of relevant evidence will become impossible or difficult in the future. This is done at the request of a party to the case or a person who may acquire the status of a plaintiff.

The means of securing evidence by the court are examination of witnesses, appointment of an expert examination, demand and/or inspection of evidence, including at the place of its location, prohibition to perform certain actions with respect to evidence and obligation to perform certain actions with respect to evidence. Where necessary, the court may apply other methods of securing evidence determined by the court.

Further, one of the means of securing claims that can be applied by courts is suspension of customs clearance of goods or items containing intellectual property objects, which can also help in evidence discovery.

The decision of the Appeal Chamber within NIPA in a case concerning claims on invalidation of a patent can be further challenged in court.

Any decision of court of civil / commercial jurisdiction (both related to infringement and invalidation claims) can be appealed in an appeal court, while the latter courts decisions can be further challenged at the Supreme Court.

The general grounds for challenging a court decision in appeal courts are violation of procedural law or incorrect application of substantive law. Other grounds include failure to establish the circumstances relevant to the case, failure to prove the circumstances relevant to the case, which the court of first instance found to be established, inconsistency of the conclusions set forth in the decision of the court of first instance with the established circumstances of the case.

An appeal court’s decision may only be challenged in the Supreme Court if the appeal court did not apply proper (or at all) conclusions of the Supreme Court in similar circumstances, if there is no Supreme Court conclusion on application of substantive law to similar circumstances, if the claimant proves that the existing conclusions of the Supreme Court should be reconsidered. There are also several procedural law violations that may be grounds for referring to the Supreme Court (i.e., the case was heard and decided upon by an unqualified court).

Similarly, to the terms of consideration of initial claims by the courts of the first instance, the duration of consideration of cases within both first and second appeal differ depending on whether it is a civil or commercial court, the complexity of each particular case and the court’s workflow, and can take from several months to several years.

The first instance decision does not enter into force until the term for appeal expires or a decision by an appeal court is made, while the preliminary injunction ruling comes into force immediately and is not subject to suspension.

The decision of the court of appeals comes into force immediately after its announcement. However, the Supreme Court may suspend execution of a contested court decision or suspend its effect (if the decision does not provide for enforcement) at the request of a participant or on its own initiative, until the end of its cassation review.

It is very difficult to estimate legal costs of patent litigation proceedings as it depends on various factors, including the nature of the claim filed (proprietary/non-proprietary), specifics of each particular case, necessity to conduct an expertise, the scope of expert examination to be conducted if appointed, etc. The amount of legal costs shall be determined based on the circumstances of each particular case.

The court fee amounts vary from UAH 2,684 (approx. EUR 70) 1  to UAH 939,400 (approx. 24,310 EUR) for claims submitted in 2023.

The above also applies to the appeal proceedings. The court fee for appeal claims submission varies from UAH 4,023 (approx. EUR 105) to UAH 1,409,100 (approx. 36,470 EUR) (and for claims to the Supreme Court - UAH 5,368 (approx. EUR 140) to UAH 1,878,800 (approx. 48,625 EUR) in 2023. However, overall costs incurred during appeal proceedings tend to be lower than compared to the proceeding in the courts of the first instance.

Yes, litigation costs are recoverable. They are usually allocated to the parties in the result of cases’ consideration depending on whether and in what amount the court satisfies / denies the claims. For example, if the claims are satisfied in full such costs as payment for the expertise are allocated to the defendant. However, with respect to attorney fees, it is up to the court to decide which amount of attorney fees to put on the losing party and courts tend to allocate these expenses to a losing party only partially (usually in amounts significantly lower than in fact incurred).

The available options for alternative dispute resolution in Ukraine include arbitral tribunal, international commercial arbitration, mediation as well as settlement with the participation of a judge. Overall, the above are used less commonly. Moreover, disputes concerning patents invalidation cannot be referred to arbitral tribunals or international commercial arbitration.

There is no direct provision requiring the parties to consider alternative dispute resolution options under a court’s order. However, the procedure for conducting preliminary hearing establishes that a court shall determine whether or not the parties wish to conclude an amicable agreement, conduct an out-of-court settlement through mediation, refer the case to an arbitral tribunal, international commercial arbitration or apply to the court for a dispute settlement with the participation of a judge.

The following general remedies are available for patent infringement:

• recognition of the rights to the patented object;
• recognition of a transaction concerning the patent as invalid;
• termination of the action that violates the right (injunction);
• restoration of the situation that existed before the violation;
• compensation for damages including lost profit;
• compensation for moral damage.

Additionally, the below remedies are available specifically against intellectual property infringements:

• application of immediate measures to prevent infringement of intellectual property rights and preserving relevant evidence;
• suspension of the passage through the customs border of Ukraine of goods imported or exported in violation of intellectual property rights;
• withdrawal from civil circulation of goods manufactured or put into civil circulation with infringement of intellectual property rights and destruction of such goods at the expense of the infringing party;
• withdrawal from civil circulation of materials and tools that were used mainly for the manufacture of goods in violation of intellectual property rights, or withdrawal and destruction of such materials and tools at the expense of the infringing party;
• one-time monetary payment instead of applying the methods of intellectual property rights protection established by paragraphs 3 and/or 4 of above;
• the use of compensation instead of damages for the misuse of an intellectual property right;
• publication, in the mass media or making publicly available by another court determined by the court that has considered the case, of information on the infringement of intellectual property rights and the content of the court decision on such infringement at the expense of the person who committed the infringement.

In Ukraine there is legislative regulation covering the evaluation of the value of intellectual property rights, which includes the “Methodology for valuation of intellectual property rights” that was developed in accordance with the National Standard “Valuation of intellectual property rights”, the latter is also applied to determine the amount of damages, caused in connection with the unlawful use of intellectual property.

Further, the amount of a one-time monetary payment (referred to above) shall be determined by the court as the amount of remuneration that would have been paid for granting a permit to use the intellectual property right in dispute and reasonably satisfies the claimant (a reasonable royalty).

The referred amounts are usually calculated on the basis of volumes and value of sales of infringing patented products. The legislative referral to calculation of the one-time monetary payment to on the basis of a reasonable royalty has only been introduced in 2023 and is yet to be applied by courts, as of the date of preparation of the Ukraine chapter of this Guide.

Additionally, depending on the circumstances of a case and the particular remedy being applied the infringing party’s fault may also be taken into account.

Courts usually do not order an enquiry into damages (separate proceedings to determine the level of damages payable), however, it is possible to appoint conduction of an expert examination to evaluate the damages if special knowledge is required.

There is no direct provision establishing additional remedies if the infringement was deliberate, however, the fault of an infringing party may be considered when awarding damages in certain cases.

Yes, withdrawal from civil circulation of goods manufactured or put into civil circulation with infringement of intellectual property rights and destruction of such goods at the expense of the infringing party as well as of materials and tools that were used mainly for the manufacture of goods in violation of intellectual property rights or withdrawal and destruction of such materials and tools at the expense of the infringing party are among the remedies provided for by law. There is no specific limitation in time established.

Yes, preliminary injunction is provided for by the respective procedural legislation. It may be requested both before the filing of the claim on the merits as well as at any stage of the proceedings. The party claiming preliminary injunction must substantiate that failure to take such measures may significantly complicate or make it impossible to enforce a court decision or to effectively defend or restore the violated or disputed rights or interests of the claimant, for the protection of which they referred or intend to refer to the court.

The preliminary injunctions are imposed without notice to the other party. However, the defendant may appeal the ruling granting the preliminary injunction.

Courts shall consider the application for granting a preliminary injunction within 2 days of its submission. The ruling on granting the injunction shall be enforced immediately.

Yes, it is possible to appeal the ruling granting the preliminary injunction, which does not suspend its enforcement.

When filing for an injunction the party claiming it may suggest possible means of security that they can provide, a security may also be requested from such party by court at its own discretion.

Yes, in order to grant a final injunction, the case shall be considered by court on the merits (it can also be agreed upon by the parties’ / granted within alternative dispute resolution proceedings).

A cross-border injunction is not prohibited under the law of Ukraine, however subject to enforcement regulation of the foreign country when imposed by Ukrainian courts. A foreign court decision granting an injunction to be enforced in Ukraine is subject to prior recognition by a Ukrainian court.

Anti-Suit-Injunction is not possible under applicable legislation due to the fundamental right of access to justice.