UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
3. Infringement 3.1 Necessary Parties to an Action for Infringement In cases for termination of intellectual property rights infringement, a plaintiff may be a patent holder or its licensee directly granted with a right to initiate court proceedings against intel- lectual property rights infringements. Ukrainian law does not require such a licence agreement to be officially registered. To substantiate one’s standing for applying to the court, one shall submit a copy of a docu- ment confirming one’s intellectual property right, or the respective extract from the register, or a licence. In this category of cases, a defendant is a per- son whom a patent holder/licensee considers an infringer. Depending on the claims in a dispute, public authorities may be involved as co-defend- ants, such as the Ministry of Health of Ukraine, a state enterprise (eg, the State Expert Centre of the Ministry of Health of Ukraine). 3.2 Direct and Indirect Infringement Ukrainian legislation does not explicitly distin- guish between direct and indirect infringement. The Patent Law provides that any encroach- ment on a patent holder’s rights is considered an infringement, which entails liability. Therefore, at the request of a patent holder or a licensee, such infringement must be ceased, and an infringer is obliged to recover any damages caused to a patent holder by such infringement. Courts will assess a fact of infringement in each given case based on evidence provided by par- ties and the courts’ own convictions.
3.3 Process Patents According to the Ukrainian law, a plaintiff bears the burden of proof with regard to its right’s infringement. The same rule applies to cases regarding process patent infringement. The Patent Law envisages that a process under a patent is considered used if each feature included in an independent claim or an equiva- lent thereof is used. Usually, such use is proven by expert reports either filed by a claimant along with its statement of claim or by a forensic expert report. The Patent Law, however, stipulates that any product, manufacturing of which is protected by a patent, in the absence of evidence to the contrary, shall be considered manufactured with the use of such process, provided that at least one of the following two requirements is met: • the product is new; and • there are grounds to believe that such product is manufactured using a protected process, and a patent holder is unable by rea- sonable effort to determine a process used in the manufacturing of such a product. In this case, the burden of proof that manufac- turing a product, in fact, differs from a patented process rests with the person who is alleged to have infringed the patent holder’s rights. The Ukrainian legal system does not provide for separate regulation when an allegedly infringing process is practised outside Ukrainian jurisdic- tion. 3.4 Scope of Protection for an Intellectual Property Right Under the Patent Law, the scope of legal pro- tection is determined by patent claims. The
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