SC Commercial Cassation Court: the Patent Owner Is Entitled to Demand Termination of Infringement of His Rights to the Invention Before the Product Is Introduced into Civil Turnover

The company filed a lawsuit against the society and the Ministry of Health of Ukraine to protect the violated intellectual property rights of the company by, in particular, obliging the society to stop infringing the rights to inventions under patents of Ukraine No. 74912 and No. 86026.

The claims are substantiated by the fact that the society filed applications for state registration of medicines with an active substance protected by patents for inventions owned by the plaintiff, which is an infringement of intellectual property rights.

The decision of the Commercial Court of Kyiv partially satisfied the claim in view of the established by the court circumstances of infringement of the plaintiff's rights to the invention directly under the patent of Ukraine No. 74912.

The judgment of the Northern Commercial Court of Appeal changed the decision of the court of first instance; paragraphs 2 and 3 of the operative part of the judgment are set out in the wording which obliges the society to stop infringement of the company's rights to inventions under the patent of Ukraine No. 74912 by prohibiting the use of inventions under the patent of Ukraine No. 74912 in the corresponding medicinal product. In other parts the decision of the Commercial Court of Kyiv was upheld.

The court decisions are substantiated, among other things, by the fact that the submission by the society of applications for registration of medicinal products containing a compound identical to the composition protected by the patent of Ukraine No. 74912 is a violation of the plaintiff's rights to the invention. In case the circumstances of infringement of the plaintiff's rights to the invention are established, the latter has the right to demand termination of such infringement without waiting for the actual market entry of the disputed medicinal products.

The Supreme Court composed of the panel of judges of the Commercial Cassation Court upheld the decision of the local commercial court (in the part that the court of appellate instance had upheld) and the judgment of the Commercial Court of Appeal.

The court noted that state registration was a prerequisite for the introduction of a medicinal product into civil turnover in Ukraine. Accordingly, filing an application for registration of a medicinal product that uses an invention, the rights to which belong to another person and are valid, is essentially a preparation for the introduction of such a medicinal product into civil turnover. Therefore, this is an encroachment on the rights of the patent owner (in this case, the plaintiff, who did not provide the society with consent to use the invention) provided for in Article 28 of the Law of Ukraine "On Protection of Rights to Inventions and Utility Models", which was reasonably taken into account by the courts of previous instances in resolving the dispute.

According to Art. 319 of the Civil Code of Ukraine, the owner owns, uses, disposes of his property at his own discretion. The owner is entitled to perform any actions in relation to his property that do not contradict the law.

Thus, the plaintiff, given the specifics of the disputed legal relations in the field of intellectual property, has the legal right to demand termination of infringement of his rights to the invention, without waiting for the introduction of the goods into civil turnover, since in case of introduction of the goods into civil turnover, termination of infringement of intellectual property rights to the invention and restoration of the situation that was before the infringement will require significant efforts and mandatory involvement of an unlimited number of persons who will acquire ownership of such goods.

The text of the Resolution of the Commercial Cassation Court within the Supreme Court of December 08, 2022, in case No. 910/17860/21 can be found at the following link - https://reyestr.court.gov.ua/Review/107746533.

This and other legal positions of the Supreme Court can be found in the Database of Legal Positions of the Supreme Court - lpd.court.gov.ua/login.