How to Invalidate a Patent in Ukraine – a Quick Guide

Taras Manolov

The amendments to the Ukrainian Patent Law, effective as of August 16, 2020, introduced new administrative procedures which allow third parties to invalidate patents and utility models.

Under the previous version of the law, a patent could only be invalidated in court. There was no legal ground for any input from third parties during the substantive examination stage.  Specifically, the examiner was not obliged to consider or base any decisions on third party statements.

The amended law introduced the possibility of filing a pre-grant opposition within six months from the application’s publication date. After the six-month period expires, it is still possible to file an observation concerning the patentability of an invention, without paying a fee and without a specific deadline. The amended law also introduced post-grant oppositions, which may be filed within nine months from the patent’s publication date.

Pre-grant oppositions are to be filed with the Intellectual Property Office. Post-grant oppositions are an administrative procedure of invalidating a patent and will be considered by the IPO’s Board of Appeal, which can now invalidate patents and utility models if they do not comply with patentability requirements.

The nine-month deadline for the post-grant patent opposition is not extendable, while there is no deadline for filing a utility model invalidation application. The patent holder and the third party filing an invalidation application can both present evidence and arguments before the IPO’s Board of Appeal. The party providing the evidence also is responsible for verifying its accuracy. If the Board of Appeal recognizes a patent or utility model as invalid, it will be deemed invalid from the day following its registration date.

An invalidation action will be handled in courts in the following cases:

• If a Ukrainian patent was registered prior to August 16, 2020; or
• If the deadline for filing an administrative claim with the Board of Appeal has passed.
  

The grounds for an invalidation action before the courts include the following:

• The invention does not meet the patentability requirements (industrial applicability, novelty, and inventive step);
• The invention claims contain features that were not present in the application materials as originally filed;
• A violation of the security provision (for patents registered on the basis of a PCT national phase application, if both the applicant and the inventor are only Ukrainian nationals/residents, the application must be filed in Ukraine first and then receive the foreign filing license for subsequent filings abroad); or
• The patent was obtained based on an application filed in violation of third-party rights.
  

To invalidate a patent, the plaintiff must file a lawsuit supported by evidence, such as, for example, an expert opinion on non-compliance with patentability requirements or other evidence relevant for the alleged invalidation grounds. The burden of proof rests on the plaintiff.

An interim injunction may be requested. Depending on the circumstances of the case, the court may, for example, prohibit amending the patent and/or re-assigning the patent. Once obtained, the interim injunction will remain in place until it is recalled by the court either during or at the end of the proceedings.

For utility models, it is possible to apply for substantive examination at the IPO, the results of which may then serve as evidence in court.

The defendant and plaintiff have equal rights during the court procedure. The defendant may produce its evidence and arguments in defense of its patent. For example, if the alleged invalidation ground is non-compliance with the patentability requirements, the main evidence would be an expert opinion stating that the patent meets all patentability requirements.

Negative first-instance decisions can be appealed before an appellate court. Appellate court rulings can be further appealed to the Supreme Court.

Along with proving grounds for patent invalidity, the plaintiff must also prove that the patent itself injures its rights or legitimate interests within the territory of Ukraine.  An example of such an injury would be if the plaintiff is a direct competitor of the defendant in the Ukrainian market, where the defendant might have a patent monopoly.

The plaintiff can file a lawsuit within 3 years from the date on which it became aware or could have become aware of the patent in question. For example, if the plaintiff was officially notified by the defendant about patent infringement, the date of notification would be the starting date of this 3-year period.

In order to defend the patent, in addition to disproving the arguments and/or evidence presented by the plaintiff, the defendant should also collect any evidence proving the absence of injured rights or interests of the plaintiff and/or evidence proving that the deadline for filing a lawsuit has passed.