UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
competition with the Antimonopoly Commit- tee of Ukraine to terminate an infringement and impose a fine thereon. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Post-Grant Oppositions Post-grant oppositions are available with regard to patents in Ukraine. Such opposition may be filed with the Chamber of Appeals of the UA PTO within nine months as from the date of publica- tion of a patent for an invention in the Official Bulletin or within the entire term of validity of a patent for utility model (or even after these rights are no longer valid). Any person through a patent attorney may file a post-grant opposition. The respective official fee shall be paid. The proceedings before the Cham- ber of Appeals of the UA PTO are adversarial, and parties may submit evidence to substanti- ate their position. Post-grant opposition shall be considered within four months, which may be extended for another two months at a party’s request if the extension fee is paid, and may also be stayed for no more than two months due to reasons envisaged by the law. The Chamber of Appeals’ decision may be challenged through the court within two months as from its receipt by a party. Invalidation Action Any interested person may apply to the court with a claim demanding to invalidate a patent on the grounds of its non-compliance with the patentability conditions or on another ground set forth by the law. The litigation is adversarial, where, in addition to other evidence, parties or the court normally engage technical experts to opine on those mat- ters requiring specific knowledge. Depending on
whether participants are individuals or legal enti- ties, a case may be heard in either civil or com- mercial court. A legitimate interest should be proved to file an action. A statute of limitations that generally constitutes three years should not be missed. According to the Supreme Court, the statute of limitations period begins from the moment when a given conflict arose in the market rather than from the date of publication of the patent being challenged. Compulsory Licensing The grounds for compulsory licensing estab- lished by the Patent Law are as follows: • if a patent holder does not use, or does not use sufficiently, a patented invention for three consecutive years, the matter shall be decided by the court, and the burden of proof regarding adequate reasons for such non- use lies upon a patent holder; prior to filing the claim, a plaintiff shall approach a patent holder, and only after getting its refusal may the court action be commenced; and • in the case of dependent inventions – when a person seeking a licence holds a patented invention which is both (i) dependent on the other invention and (ii) may not be used with - out infringing the respective patent. The Ukrainian government may allow a com- pulsory licence to ensure public health, national security, environmental safety, and other public interests. 2.3 Courts With Jurisdiction The High Court of Intellectual Property was established in 2017 to consider IP cases and serve as both first and appeal instances. It has not started its operation yet due to ongoing judi-
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