UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
1.5 Rights and Obligations of Owners of Intellectual Property Rights Rights of Owners of Intellectual Property Rights A patent holder has a right to use their invention/ utility model at their own discretion, provided that such use complies with the law and does not infringe the rights of other patent holders. The Patent Law lists the following actions as use of the invention/utility model: • manufacturing a product using a patented invention/utility model, using such product, offering for sale, including via the internet, selling, importing and otherwise introducing into turnover or storing such product for the said purposes; and • applying a process protected by a patent or offering it for use in Ukraine, if a person offering such process is aware that the use is prohibited without a patent holder’s consent or, given the circumstances, it is obvious. A patent holder also has a right to prohibit or allow use of its invention/utility model, demand ceasing an infringement, and recover damages caused by an infringement. Obligations of Owners of Intellectual Property Rights The Patent Law sets forth the following obliga- tions of a patent holder: • to pay the fees for maintaining validity of intellectual property rights for an invention/ utility model; and • to use its rights to an invention/utility model in good faith. All patents are published in the respective state registers available online and constantly updat-
A fee must be paid for maintaining a patent for each year of its validity. In addition, the law allows supplementary protection for some inventions, which should be confirmed by a Supplementary Protection Certificate and may not exceed five additional years. The term of intellectual property rights for an invention protected as a commercial secret is set forth in the respective agreement. The Martial Law imposed in Ukraine in 2022 caused a legal ambiguity regarding IP rights terms which has not been resolved so far. Name- ly, according to the Law of Ukraine “On Protec- tion of Interests of Persons in the Sphere of Intel- lectual Property during Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine”, IP rights, the validity of which expires on the day of impo- sition of the Martial Law in Ukraine or during the Martial Law, shall remain valid until expiry or cancellation of the Martial Law. Upon expi- ry or cancellation of the Martial Law, the term of validity of IP rights may be extended in the manner envisaged by the regular IP law. In view of the main purpose of the above norm, and in combination with other provisions of the said Law, it may rather be interpreted as suspension of deadlines for renewal of IP rights and other prosecution terms only. However, to date in patent infringement cases involving the patents that have expired during the Martial Law, the first instance and appellate courts have been reluc- tant to close the proceedings since they deem such patents valid until the Martial Law expires/ is terminated. The Supreme Court has not yet opined on the matter to resolve the issue.
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