UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
to apply a PI will create obstacles in enforcing a court decision or make it impossible. The court should consider a motion for a PI with- in two days as from its filing. Rulings on PIs enter into force immediately. Court action A patent holder may file a claim demanding the termination of intellectual property rights infringement, withdraw from the turnover objects infringing intellectual property rights, recover damages/lost profits, etc. Jurisdiction of the dispute depends on the par- ties: if individuals are involved as parties to the dispute, the civil courts shall consider the case; and if only legal entities are involved, the com- mercial courts will be appropriate. Criminal proceedings The Criminal Code of Ukraine envisages criminal liability for infringement of rights to an invention/ utility model if a suffering party incurs damages in an amount exceeding approximately USD760. Customs detention A right-holder may record its patents with the Customs Register. If a customs officer reveals goods suspected of infringing intellectual prop- erty rights, customs clearance of such goods is suspended, and a right-holder shall be noti- fied thereof. The latter may bring a court action for confiscation and destruction of such goods, and, before an enforceable court decision is tak- en, request a PI to suspend customs clearance. Unfair competition proceedings Should technical information considered a com- mercial secret be unlawfully collected, disclosed and/or used, the owner of the commercial secret may file a complaint for protection from unfair
A right-holder may use a variety of legal mecha- nisms to protect its intellectual property rights. Extrajudicial Remedies Before filing a claim for protection of intellec- tual property rights with the court, a right-holder may send a cease and desist letter to an alleged infringer. Sending such a letter is not a prereq- uisite for filing a suit but can sometimes help to avoid litigation. The demands in the letter usually include ceasing the infringement, refraining from infringing the rights in the future, and/or recover- ing damages. According to the Commercial Code of Ukraine, a recipient of such a letter must respond within one month. If a response is not received or its content does not satisfy the demands of a right- holder, the latter may send a repeated letter or file a lawsuit. Judicial Remedies Preliminary injunction A patent holder may protect their rights by ask- ing the court to apply a preliminary injunction (“PI”), which may include a variety of actions depending on the substance of an infringement. For example, the court may apply a PI by pro- hibiting the relevant authorities from granting a marketing authorisation for a potentially infring- ing product or introducing any changes into the pharmaceutical registration dossier. In a motion for a PI, a patent owner should pro- vide the court with sufficient evidence confirm- ing that there are reasonable grounds to believe that infringement is taking place, and that failure
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