Obtaining a patent is often seen as definitive confirmation of rights to a technical solution. For many companies and inventors, a patent becomes a valuable asset that allows them to protect their innovations from competitors and gain a commercial advantage in the market. However, not every issued patent is indisputable.
Ukrainian law provides for the possibility of having a utility model patent declared invalid through the courts. Moreover, such a dispute may be initiated not only by a competitor but by any person whose rights or interests are infringed by the existence of such a patent.
Why an Issued Patent Does Not Always Guarantee Protection
Unlike inventions, utility models in Ukraine are registered under a simplified procedure. When a patent is granted, no full-scale substantive examination of the novelty of the technical solution is conducted. That is why, in practice, situations often arise where the owner receives a patent for a solution that was already known or does not actually meet the requirements for patentability.
As a result, legal disputes over utility models are significantly more common than those over inventions. Very often, utility model patents are used as a tool in competitive battles. Once a patent is granted, its owner can send claims to competitors, demand that they cease production, or even file lawsuits alleging infringement of intellectual property rights.
However, if the patent itself was granted in violation of the law, it may be revoked. In such a case, the owner effectively loses all the legal protection granted by the registration.
Grounds for Invalidating a Patent
The Law of Ukraine “On the Protection of Rights to Inventions and Utility Models” provides for several grounds for declaring a patent invalid. The most common ground is the utility model’s failure to meet the requirements for patentability. For a utility model, these requirements are novelty and industrial applicability. If it is proven that a similar technical solution was already known worldwide prior to the filing date, the patent may be declared invalid.
Another ground is the inclusion in the utility model’s claims of features that were not present in the originally filed application. In other words, the applicant cannot substantially alter the content of the technical solution after filing the application and obtain protection for something that was not initially disclosed.
A patent may also be revoked if it was obtained through a violation of the rights of others. For example, when the applicant has effectively appropriated another person’s technical solution or filed an application without proper legal grounds.
At the same time, case law shows that the exact moment of patent issuance is of key importance. The court examines whether grounds for invalidity existed as of the date the rights were acquired, rather than circumstances that arose after registration.
What Questions Most Often Arise in Court
One of the most difficult issues is determining whether the plaintiff’s rights were actually infringed by the existence of a patent.
Courts have repeatedly emphasized that the mere existence of a patent does not automatically constitute an infringement of others’ rights. The plaintiff must demonstrate exactly how the existence of such a patent affects their business, restricts their rights, or poses a threat of infringement.
Another important issue is the expert examination. In most such disputes, the expert opinion becomes the key piece of evidence. Experts analyze the state of the art, compare the disputed utility model with existing solutions, and determine whether it meets the criteria for novelty. In fact, the fate of the patent often hinges on the results of this expert examination.
What Happens After a Patent Is Declared Invalid
If the court grants the claim, the consequences for the patent owner can be very serious. An invalid patent is considered to have had no legal effect from the very beginning of its existence. This means that the owner loses the ability to rely on it as a basis for protecting their rights or asserting claims against competitors.
In addition to declaring a patent invalid, courts often order the competent authorities to make the necessary changes to government registries. That is why, in such cases, a claim seeking a declaration of invalidity is often accompanied by a claim seeking an order to take specific actions—for example, to amend the registry or to publish information regarding the patent’s expiration.
For businesses, this can mean the complete loss of a monopoly on the use of the relevant technical solution.
Legal disputes over utility models demonstrate that the mere fact of obtaining a patent does not guarantee absolute protection. If a technical solution does not meet the requirements of the law or if the patent was obtained in violation of the rights of others, it can be successfully challenged in court.
For patent holders, this is a signal that they need to thoroughly review their inventions before filing an application. For competitors, it serves as a reminder that unfounded patent claims are not always indisputable and can be challenged.
If you need to register a utility model, conduct a patent audit, challenge another party’s patent, or protect your rights to a technical solution, please contact our law firm. We will help you develop an effective intellectual property protection strategy and minimize legal risks for your business.
