Patent Trolls in Ukraine
The round table Combating Patent Trolls in Ukraine in the Context of IP Rights Protection was held at the Ministry of Justice of Ukraine on 25 November.
Government officials, representatives of research institutions, as well as representatives of leading Ukrainian law firms, discussed the problems of patent trolling, and tried to find the most effective strategies for dealing with patent trolls.
The event has been moderated by Vladyslav Fedorenko, director of Scientific and Research Center of Forensic Expertise on Intellectual Property of Ministry of Justice of Ukraine, doctor of legal sciences, Professor, forensic expert; and Veronika Berezanska, public projects coordinator at Pakharenko & Partners IP and Law firm, the Head of the Commission on Intellectual Property and Unfair Competition of the ICC Ukraine, Candidate of Chemical Sciences.
Bohdan Paduchak, deputy director of Innovation and Intellectual Property Department at the Ministry of Economic Development and Trade of Ukraine, gave the opening speech. “In 10 days, the Government will receive the draft concerning the protection of trademarks and industrial designs. It sets out efficient mechanisms for dealing with patent trolling. The draft provides for the post-grant opposition procedure that enables the validity of industrial design patents to be disputed by filing the post-grant opposition with the Ukrainian IP Office Appeals Chamber, and envisages money penalties for persons who have obtained protection in breach of the third parties’ rights”, said Mr. Paduchak.
Antonina Pakharenko-Anderson, managing partner of Pakharenko & Partners IP and Law firm, President of Ukrainian Group of AIPPI (International Association for the Protection of Intellectual Property), who was among initiators of the event, started with roots of “patent trolling” definition, which came to Ukraine from the USA. “Modern trolls are oriented predominantly on the latest technologies and products, choosing hi-tech companies as Apple, Samsung, Hewlett-Packard, Asus, Fujitsu, Lenovo, Panasonic as the victims. IP objects covered by patents belonging to such companies, are largely to match novelty patentability criterion. In Ukraine, patent trolling relates not only to inequitable conduct of subjects on the market, but also to an open fraud, which became of incredible scale during last four years”, she said.
Oleksiy Gashytskyi, Customs Control Department, State Fiscal Service of Ukraine, spoke about the impact of patent trolling with regard to customs. According to Mr. Gashynskyi, it is required that the draft concerning industrial designs and utility models be submitted to the government on the double, in order to make it possible to dispute the validity of patents in administrative agencies, and harmonize local legislation with the EU acquis and ensure the same level of intellectual property protection.
Participants discussed the negative effect of the customs deposits cancellation towards the situation with patent trolls in Ukraine. According to Olexandr Doroshenko, deputy chief expert officer at the Research Institute of Intellectual Property of the National Academy of Law Sciences of Ukraine, it’s not the customs deposit restoration that will help prevent patent trolling. Instead, we have to improve the PI regulatory framework and, in particular, make it possible to dispute the validity the patent rights and file such claims with administrative agencies.
Patent trolling in Ukraine differs from that in the USA and the EU. We can define two major trends in patent trolling. The first is the registration of industrial designs and utility models, which are under protection in other countries, but have not been registered in Ukraine. Another trend is the result of the overly simple procedure of granting patents for industrial designs and utility models. In addition, the burden of proof lies with the person whose rights have been violated by the patent troll, which means that the claimant has to prove that the infringement took place, and that the patent troll caused the damage. Sometimes, instead of going to court, it is easier and cheaper to pay off the patent troll”, Tetiana Chabanets, forensic expert at the Intellectual Property Forensic Science Center of the Ministry of Justice, explained.
According to Inna Shatova, chief of RA Department for Industrial Property at the State IP Office, the improvement of regulatory framework has to deal not only with the mechanisms of invalidating patent rights and industrial design registration, but also with the intellectual property filed for protection. “The best way to fight patent trolls is to provide for the comparison of the two items during the examination of the international novelty. In addition, the lawmakers should stiffen the penalties for abuse of rights”, said Ms. Shatova.
Mariya Ortynska, CEO, IpStyle Patent Law Firm, member of the INTA Anti-counterfeiting Committee, discussed best practices of protection against patent trolls in the USA: “In the US, there are lists of patent trolls intended to deal with them. In addition to regulatory measures, we should use such social mechanisms in Ukraine, for example, do the research of patent trolls’ activities, which would influence their reputation, and get the press, NGOs and governmental organizations involved. We should be thinking ahead, since any improvement in protection mechanisms, as a rule, makes transgressors look for the new back doors for the abuse of rights and infringements”.
“For now, patent trolls in Ukraine aren’t on the wrong side of the law. Fighting back against them is a time-consuming and costly process. Until we get the new regulatory framework, instead of fighting patent trolls, the business will pay them”, says Anton Kuts, Attorney-at-Law, Head of Conflicts & Disputes Resolution practice section at Juscutum Attorneys Association.