أوكرانيا

Case № 910/8295/21

Plaintiff: Chugai Seiyaku Kabushiki Kaisha

Defendant: State organization "Ukrainian National Office of Intellectual Property and Innovation"

Lawsuit re: invalidation and cancellation of refusal, obligation to perform actions.

In case No. 910/8295/21 Chugai Seiyaku Kabushiki Kaisha (Company) filed a lawsuit against the State Organization "Ukrainian National Office of Intellectual Property and Innovation" (Ukrpatent, UKRNOIVI) for invalidation and annulment of Ukrpatent's refusal to grant additional protection of invention under a patent right; obligation to carry out state registration of additional patent protection of Ukraine.

The claims are based on the fact that the plaintiff, as the owner of the patent, has the legal right to extend the period of validity of intellectual property rights for invention under the specified patent.

Local commercial court satisfied the claim with a decision that was left unchanged by decision of the appellate commercial court.

The Supreme Court rejected the cassation appeal of UKRNOIVI, changed the decision of the local court and the decision of the appellate economic court, setting out the motivational part in own version. In other part, left the court decisions unchanged.

The Supreme Court in this case concluded, in particular, the following.

Courts of previous instances found that the plaintiff received a patent on 25.02.2015, and the use of inventions under the patent became possible after state registration of the medical product "ALEKENZA", which took place on 02.11.2018.

Article 27-1 of the Law of Ukraine "On the Protection of Rights to Inventions and Utility Models" (hereinafter - Law № 3687-XII) establishes a specific period during which a request for additional protection can be submitted - 6 months from the date of publishing information on the state registration of invention or from the date of first authorization by relevant competent authority (whichever is later). Previously (before the Law of Ukraine dated 21.07.2020 № 816-IX came into force), such a term was actually 19.5 years - the petition should have been submitted 6 months before the expiration of the patent term.

The court of first instance, with which also agreed appellate commercial court, in upholding the claim, proceeded, in particular, from the fact that the plaintiff was deprived of the opportunity to exercise his right to extend the period of validity of intellectual property rights, which is inadmissible and inconsistent with The Association Agreement and the General Agreement on Trade in Services dated 15.04.1994, according to which Ukraine undertook to contribute to the protection of intellectual property by nationals of any country, including the plaintiff, since he is a resident of Japan, a member of the World Trade Organization. The plaintiff's right to additional protection should be exercised in accordance with the provisions of Law No. 3687-XII and the Instruction on the Procedure for Extending the Term of a Patent for an Invention, the Object of which is a Means, the Use of which Requires the Permission of a Competent Body, Approved by the Order of the Ministry of Education and Science of Ukraine dated 13.05 .2002 № 298 (hereinafter referred to as Instruction), in the version valid on a date of patent and medicinal product "ALEKENZA" registration, the additional period of protection of inventions under the patent of Ukraine №  107796 should be counted from 10.06.2030, and the term of additional protection of inventions under the specified patent taking into account the provisions of the Association Agreement should be three years, four months and twenty-four days.

In this case, according to circumstances established therein, the decisive factor is not an event of filing a petition, but a moment of the plaintiff's right to extend the validity period of rights to inventions under the patent, which came on 02.11.2018 with the registration of the medicinal product "ALEKENZA". As of the time when the plaintiff had such a right, the fourth part of Article 6 of the Law and paragraph 1.5 of the Instructions were in force, which set the plaintiff a deadline for submitting a petition.

According to the Supreme Court, the absence of a specific procedure for obtaining additional protection of invention rights in the transitional period cannot indicate its unconditionality, and therefore the specific period established by the legislator during which a request for additional protection can be applied for has its legitimate purpose.

At the same time, the owner of a patent whose object of invention may be granted additional protection must, from the date of entry of the Law of Ukraine dated 07.21.2020 № 816-IX into force, submit a corresponding request for additional protection within a reasonable time.

The Law of Ukraine dated 21.07.2020 № 816-IX entered into force on 08.16.2020. According to the circumstances established by previous courts, the plaintiff applied to UKRNOIVI on 06.11.2020 to extend the term of intellectual property rights, specifically the patent and the issuance of a certificate of additional protection.

Therefore, on the basis of Article 6 of the Convention, the Supreme Court, taking into account the above, guided by the principles and criteria of "reasonable term" determined by the practice of the ECHR in the application of Article 6 of the Convention, came to conclusion that in this case the plaintiff submitted a petition within time limits under the concept of "reasonable terms".