UKRAINE Law and Practice Contributed by: Oleksandr Mamunya, Ganna Prokhorova, Nataliia Badora and Ihor Kharytonov, Mamunya IP
at the moment of filing with the court. However, a party may challenge a judge if there are doubts over their impartiality during a case considera- tion. 5.3 Settling the Case Ukrainian procedural law envisages a procedure for the settlement of a dispute with the partic- ipation of a judge. Such a procedure may be initiated by the parties to a case and may be commenced only once per case consideration. During such a settlement procedure, court con- sideration is suspended. A judge conducts a series of both open and closed consultations with parties, and any information disclosed in such consultations is strictly confidential. The settlement procedure may conclude in a settlement agreement or with continuing case consideration. The parties may also conclude a settlement agreement at any stage of the court proceedings without commencing a settlement procedure, that is, without engaging a judge in settlement negotiations. 5.4 Other Court Proceedings Filing an invalidation action may be a good strat- egy for a defendant in an infringement action. It may be done by filing a counter-claim in an infringement proceeding or a separate claim. Practically, it is rather a questionable issue as to whether an infringement case should be suspended pending the resolution of a valid- ity attack. Some judges deem this appropriate, while others do not, and there is no unequivocal practice with regard to this question in Ukraine. However, the chances of suspension may be
high, depending on the specific circumstances of the matter.
6. Remedies 6.1 Remedies for the Patentee Available Remedies
Injunctive relief (the court ordering the defend- ant to cease certain actions and/or perform certain actions) is the most sought after remedy in infringement actions. The patentee usually complements demands for general injunctive relief prohibiting certain actions with related and more precise demands, such as the obligation to withdraw the goods in question from turnover or the invalidation of marketing authorisations of medicinal products. The Patent Law allows claims for monetary dam- ages (actual damages suffered by the patentee and lost profits of the patentee) for infringement; however, practically, those are rarely sought giv- en the difficulties in proving their amount. No enhanced or provisional damages are allowed. In addition, instead of claiming damages, the patentee may opt for compensation at their discretion. The amount of compensation is determined by the court based on the scope of infringement, the infringer’s fault, and other rel- evant circumstances. The compensation cannot be less than the amount of royalties that would have been paid for authorised use of the pat- ent. In cases of unintentional infringement with- out negligence, the compensation equals the amount of royalties that would have been paid
for such authorisation. Discretion of the Court
The court has minor discretion in ordering rem- edies – the plaintiff determines every demand
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