UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
evidence. An expert is a person who has spe- cial knowledge in a certain field. In patent cases experts are normally engaged to opine on mat- ters requiring specific knowledge because a judge is not entitled to establish circumstances where it has no such specific knowledge (as a rule, Ukrainian judges do not have specific knowledge regarding inventions/utility models). Expert reports may be either party-engaged or requested by the court. An expert should be informed of the criminal liability for providing a knowingly false report. An important aspect in assessment of an expert report is, in addition to its validity on the merits, its compliance with all the requirements of the effective procedural law. Both circumstances may affect admissibility of the expert opinion. 3.7 Procedure for Construing the Terms of the Patent’s Claim There is no separate procedure for construing the terms of patent claims in Ukraine. This is normally performed by an expert who opines in an infringement or invalidation case. 3.8 Procedure for Third-Party Opinions Ukrainian procedural law does not envisage a system by which a court can seek or receive third-party opinions (amicus briefs). All state- ments are usually made by parties to a case. When necessary, a court may request certain information or documents from any third parties.
Also, a patent may be invalidated if: • there are features in the claims of a granted invention/utility model that were not present in the respective application; • state registration of an invention/utility model was conducted in violation of third parties’ rights; or • the procedure for patenting an invention/util- ity model was carried out in violation of the Patent Cooperation Agreement. To file a claim for the invalidation of a patent, it is usually necessary to prove that a plaintiff has a legitimate interest to file a lawsuit. In order to prove such circumstances, a plaintiff may use, for example, any evidence confirming infringe- ment of the plaintiff’s rights by a patent being challenged or the inability to receive market authorisation of a medicinal product that is in conflict with a disputed patent. 4.2 Partial Revocation/Cancellation A patent may be recognised invalid in whole or in part. The latter is done by excluding independ- ent claims, excluding one or more independ- ent claims along with dependent claims, or by amending independent claims, provided that such exclusions and/or amendments reduce the scope of legal protection granted by the patent. At the same time, Ukrainian legislation does not provide for the invalidation of a patent in respect of solely dependent claims. 4.3 Amendments in Revocation/ Cancellation Proceedings A patent holder may at any time (including, dur- ing revocation/cancellation proceedings) waive its patent rights fully or in part by filing a respec- tive request with the UA PTO. However, in such a case, the UA PTO shall conduct an examination
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
A claim for invalidation of a patent may be filed if an invention/utility model does not meet the patentability conditions.
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