Ukraine: Patent Monopoly: Est Modus In Rebus?

Last Updated: 2 August 2019
Article by Yaroslav Ognevyuk and Tetiana Yushchenko

During the long journey from the Statute of Anne and early French patents to the strong patent systems for today's high-tech inventions, humanity has at various times facing the problem of striking a proper balance between the scope of intellectual property rights and the need to sustain scientific and technological progress. Current law-enforcement practices demonstrate that despite harmonized IP legislation globally, the issue of uniform understanding of cases of legal limitations on patent owner exclusive rights (patent monopoly) triggers numerous discussions.

As we know, owners of patents on inventions, utility models and industrial designs possess exclusive rights. One can consider these exclusive rights as granting a patent owner the right to use the relevant intellectual property.

For the purpose of evolutionary development of science and technology, this monopoly is usually limited by relevant laws and regulations.

The first level of limitations are universally applicable to all exclusive rights and include limitations on their use period and territory. The next level of limitations is related to actions that do not qualify as patent right infringement. "Such laws are like spiders webs: they catch the weak and poor, but the rich can rip right through them," the ancient Greek anarchasis Solon, who articulated this opinion at some point, was right because numerous legal proceedings and controversial opinions regarding the appropriateness of their interpretation are related to the above-mentioned limitations on patent monopoly. In this connection we would suggest considering in more detail such patent monopoly limitations as the right of prior use and use of a patented item for scientific purposes or for experiment, and trying to unravel this tangled legislative "spiders web".

Granting the right of prior use is representative for patent law and stems from the possibility of parallel invention; hence, there is a compromise, since in this case the novelty criterion is not present1. The results of legal analysis of Article 31(1) of the Law of Ukraine On Protection of Rights to Inventions and Utility Models suggest that the right of prior use arises where the following conditions are met simultaneously:

  1. a technology solution identical to the claimed invention was created diligently as a result of the entity's intellectual activity;
  2. a person claiming the right to such technology solution has already been using it or has taken considerable measures to prepare for its use;
  3. actions specified in para. 2 have already been taken on the territory of Ukraine;
  4. actions specified in para. 2 were taken before the date of filing of the patent application or before the priority date.

However, the scope of exclusive rights granted to a prior user is narrower than the scope of rights granted to the patent owner2. This happens because the law limits the prior user's right to the scope of use of the article identical to the claimed invention, which was in effect as of the date of the patent application.

In addition, neither the Civil Code of Ukraine nor the relevant subject-specific legislation regulate relations between a prior user and a patent owner. Thus, the parties are free to determine the methods and framework for the use of their rights on the basis of the general principles of contract law.

The regulator has not established the manner or the document to be used to confirm the prior user's right to the patent's use. In Ukraine, the issue as to whether such rights are available arises during a court dispute regarding the infringement of the patent owner's exclusive rights. At the same time, the laws and regulations of numerous European countries provide for a special mechanism confirming the prior user's right. For example, para. 4 of section 23 of the Austrian Patent Act 19703 provides for the patentee's issue of a special certificate to the prior user. However, as already mentioned, based on national realities, the right of first use can be confirmed only by a court decision, including where it covers a settlement agreement between a patentee and a prior user. The said circumstance adds a degree of importance to the attorney's role in such legal proceedings, since the success of a dispute between a prior user and a patentee depends on the choice of proper litigation strategy and the quality of substantiating all material circumstances.

Another disputable issue in the practices of limiting the patent owner's right is the usability of a patented invention for scientific purposes or for experimental use. In this case, proving the scientific credibility of the purpose of use of the invention and the relevant entity's capability to conduct scientific activity is a major problem.

The content of the terminology category "use for scientific purpose" can be articulated by analyzing the provisions of subject-specific laws and regulations that govern scientific and scientific-and technical activities. Any activity involving the use of a patented invention would qualify as an activity carried out for scientific purposes when the following three basic conditions are simultaneously met:

  1. the entity that conducts scientific and scientific-and-technical activities has the relevant legal capacity;
  2. the person holds a proper level qualification as an "academic researcher";
  3. an approved scientific project is available and its implementation takes into account the requirements ofthe Law of Ukraine "On the Protection of Rights to Inventions and Utility Models".

Due to the completeness of the legal definition of "scientific activity", one question that arises in court practice is: does the regulator allow for the possibility of legal use of a patented article in applied scientific research?

With regard to distinguishing between fundamental research and applied research, we would note that under Frascati Manual4 the difference between them is illustrated by two phrases: for basic research - "without any particular ... use in view"; for applied research - "directed... towards a specific practical aim...".

In our opinion, the type of scientific research is decisive for proper qualification of the actions of a person intending to use a patented invention without obtaining the right holder's permit. Fundamental studies of a technical solution may be treated as permitted use of a patented article. However, applying a patented article during applied research, where the goal differs from obtaining new knowledge, should qualify as an infringement of exclusive rights5.

In addition, the law cannot be properly applied without prior in-depth analysis of the prerequisites for paving the legal way to the provisions limiting patent protection.

The issue of using the limitations on patent monopoly as a tool to promote competition in the pharmaceutical industry arose for the first time in the early 1980s in the United States. This was in 1984, during consideration of the high profile Roche Products, Inc. v Bolar Pharmaceutical Co case6. That decision was a catalyst for approval by the US Congress of amendments to the law during that same year. These amendments enshrined the provisions permitting the use of a patented original pharmaceutical until the expiry of the relevant patent lifetime, where such actions are taken for purposes essentially related to the development and receipt of information in accordance with federal law (through compulsory licensing).

Some countries still do not support the idea of compulsory licensing. However, there are countries that in addition to having recognized the Declaration on the TRIPS Agreement and Public Health, which grants each WTO member the right to issue a compulsory license on pharmaceuticals and the freedom to determine the reasons for granting the same, successfully exercised such a right in practice (e.g. India). Typically, such countries associate the potential limitation of a patent owner's rights with the presence of public interest.

The above considerations suggest the conclusion that limitations on the patent owner's exclusive rights should be sufficiently clear and based on the principles of proportionality and reasonableness, thereby providing an adequate balance between the interests of participants of legal relations and public interest.


1 Kryzhna V. Right of prior use in the patent law of Ukraine/Entrepreneurship, business and law (in Ukrainian: KphDKHa B. IIpaBo npe)l(,l\enOJIh30BaHIDI BnaTeHTHOM npaBe YKpallHhI/IIpel\IIpllHllMaTeJIhCTBO, x03l!fiCTBO Ii npaBo), 1999. -No.2. - pages 37-39.

2 Basai O.V. Conditions for creation of the right of prior use of industrial property (in Ukrainian: Eacai1 O.B. YMOBIi BIiHllKHeHIDI npaBa nOnepel\HhOrO KopIicryBaHIDI Ha 06'€KTIi npOMllCJIOBOI BJIaCHocTiJ/Scientific Joumal of Uzhhorod University, 2012. - Issue 18. - page72

3 htm

4 Proposed Standard Practice for Surveys on Research and Experimental Development. (2002) Frascati Manual. OECD Publishing.

5 Petrenko O.B. Patent monopoly exception and framework for patent rights protection (in Ukrainian: IIeTJleHKo O.E. BIiKJIlOQeHIDI 3 naTeHTHol MOHOnOJIll Ta Me'lci 3aXMcry naTeHTHIix npaB)//Joumal of Khmelnytsky Institute of Regional Management and Law. -2004.- No. 1-2 (9-10).- pages 104-116. page 111

6 https:/

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions