UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
Proving Non-Infringement With Appropriate Evidence Under the Ukrainian law, a patent holder shall prove that a defendant used every feature included in an independent claim of an inven- tion/utility model or a feature equivalent thereto. At the same time, a judge should normally engage experts to opine on any technical mat- ters requiring specific knowledge. Any party to a case, including a defendant, may also file a party-engaged expert report to confirm non- infringement. Such a party-engaged expert report will have the same evidential value in the court as the one drawn up upon request by the court. Counter-Claim or Separate Claim for Patent Invalidation A defendant in patent infringement case may either file a counter-claim or file a separate law- suit against a patent holder for patent invalida- tion. In such a case, a defendant should prove inconsistency of invention/utility model with the patentability conditions. If a separate lawsuit for patent invalidation is filed, the respective patent infringement pro- ceedings may be stayed until the patent invali- dation case is resolved. However, such suspen- sion of proceedings depends on the matter and the judge’s opinion. Bolar Exemption In 2020 the Patent Law was amended with the Bolar provision, which in Ukraine has a rather limited scope of application. Namely, importation of goods, manufactured using an invention/utility model, into the cus- toms territory of Ukraine for research conducted to prepare and submit information for market-
interpretation of claims is carried out within the specification of the relevant invention/utility model and corresponding drawings. Ukrainian courts are keen to make use of expert reports while determining facts around the use of a certain invention/utility model and establish- ing the circumstances of a patent infringement. Experts usually assess both direct and equiva- lent use of the features of an invention. For assessing equivalent use, the following con- junctive criteria are to be taken into account by an expert: • the essence of the invention/utility model is not changed when replaced by an equivalent feature; • the result achieved by application of the invention/utility model is not changed when replaced by an equivalent feature; and • the means to replace a feature with an equivalent one are known. If any of the above criteria is not present, replac- ing a feature of the invention/utility model can- not be considered equivalent, and, accordingly, there is no reason to claim patent infringement. The prosecution history may be taken into account by an expert conducting expert exami- nation, however, it is not obligatory, and the final interpretation of the scope of patent protection is made based on the granted claims. 3.5 Defences Against Infringement If a patent holder files an infringement claim, a defendant may develop one or several of the fol- lowing defence strategies.
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