UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
ing authorisation of a medicinal product is not considered an infringement of a patent holder’s rights. If relevant, such provision may be used by a defendant in an infringement proceeding; how- ever, at the moment, respective jurisprudence is not yet well-established. Compulsory Licensing Under the Patent Law, the grounds for compul- sory licensing are as follows. • If a patent holder does not use/does not use sufficiently a patented invention for three consecutive years – in this case, the matter shall be decided by the court, and the burden of proof with regard to providing adequate reasons for such non-use lies with the pat- ent holder; prior to filing a claim, a plaintiff shall approach a patent holder, and only after receiving a licence refusal may they com- mence a court action. • In 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 other patent. • The Ukrainian government may allow a compulsory licence to ensure public health, national security, environmental safety, and other public interests. The court shall assess the sufficiency of use depending on the circumstances of a given case. As some doctrinal sources assume, the “insufficient use” may be described as some minor use of an invention, which is character- ised by both the volume of industrial use (almost not used in the production process of a patent holder or third parties) and the period of such use (a short period).
Each of these strategies may be used by a defendant in an infringement proceeding if cir- cumstances allow. Prior Use The Patent Law provides for prior use rights, according to which any person – who, before the date of filing an application with the UA PTO or, if priority was claimed, before the date of its priority, in good faith used in Ukraine a technical solution identical to the claimed invention/utility model, or made significant and serious prepara- tion for such use – retains the right to continue such use free of charge or to use an invention/ utility model, as implied by the preparation. Prior use rights are limited to the amount of such use as of the date of filing a relevant application with the UA PTO. Other Provisions The Patent Law also envisages some other cir- cumstances under which use of a patented prod- uct or process will not constitute an infringement of a patent, among which are: • use of a patented product or process for non- commercial purposes, for scientific purposes, or experimentally; and • manufacture of a product or medicinal product containing a product with the use of a patented invention, which obtained sup- plementary protection, for export to third countries and for conducting other actions if necessary for the manufacture of a product or medicinal product for export to third coun- tries. 3.6 Role of Experts Ukrainian procedural law provides that an expert report is a separate piece of evidence, assessed by a court along with other evidence in the case file, and has no prevailing value over any other
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