UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
of a new edition of the claims as to their compli- ance with the patentability conditions. If such amendments were introduced during pending court proceedings, parties and/or the court may decide on partial waiver of a suit, par- tial satisfaction of a suit, or waiver of a suit in full, depending on specific circumstances and the scope of amendments. 4.4 Revocation/Cancellation and Infringement Revocation and infringement may be heard together during the court case, the second being filed as a counter-claim. However, there is no rule explicitly stating the need to consider both claims in the same proceeding. Such claims may also be heard separately in dif- ferent proceedings if a defendant does not initiate a counter-claim within the patent infringement proceeding. If such claims are heard separately, a court may suspend one of the proceedings until the decision in the other enters into force, and vice versa. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights Ukrainian procedural law sets general rules for proceedings in all matters, including intellec- tual property cases. There are some differences between civil and commercial courts since those are regulated by separate Procedural Codes. For example, the Code of Ukraine on Commer- cial Proceedings explicitly prohibits consider- ing intellectual property cases under a simpli- fied procedure. At the same time, the Code of Ukraine on Civil Proceedings does not set forth such a restriction.
The Code on Commercial Proceedings envis- ages that intellectual property cases are to be considered by the High Court of Intellectual Property, which has not yet started its operation due to ongoing judicial reform. While both Procedural Codes establish a one to three month term for case consideration per instance; practically, a typical timeline of the proceedings in intellectual property cases will depend on the jurisdiction in question. In com- mercial courts, consideration of a case may take several months per individual instance, while in civil courts cases can be considered for years. That is due to the overload of civil courts and the lack of judges. Intellectual property cases usually require involvement of an expert having specific knowl- edge on the matter. Such an expert may be sum- moned to the court hearing to provide additional explanations regarding its expert report. 5.2 Decision-Makers The Code on Commercial Proceedings envisag- es that intellectual property cases are to be con- sidered by the High Court of Intellectual Property, which shall consist solely of judges specialised in intellectual property cases. The Court, though established in 2017, has not started its operation yet due to ongoing judicial reform. Currently, intellectual property cases are consid- ered by all judges. The judges typically do not have a technical education, being qualified only in law. For establishing circumstances requiring specific knowledge, attested experts are usually engaged. The parties do not have an influence on who the decision-maker will be since the claims are dis- tributed among judges by an automated system
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