The Supreme Court of Ukraine has considered a dispute concerning the invalidation of a utility model patent and clarified the requirements a claimant must satisfy to obtain judicial protection in patent proceedings. The judgment was delivered on June 30, 2026, in case No. 947/27630/23.
The claimant sought the invalidation of an earlier utility model patent and the corresponding amendment of the State Register of Patents of Ukraine for Inventions and Utility Models. He argued that the disputed utility model did not satisfy the novelty requirement and relied on expert opinions, patent examination materials and correspondence from the Ukrainian patent office.
The claimant was also a co-owner of a utility model patent registered in 2019. According to his submissions, the owners of the earlier patent considered the later utility model to reproduce their technical solution. The court of first instance granted the claim and declared the earlier patent invalid. However, the appellate court reversed that judgment because the claimant had failed to demonstrate that the disputed registration infringed any personal right or legally protected interest.
The Supreme Court agreed with the appellate court and upheld its decision. It emphasized that the purpose of civil proceedings is to protect rights and interests that have actually been infringed, denied or challenged. A party seeking judicial protection must therefore identify the specific right or legitimate interest affected by the defendant and explain how the disputed patent restricts its legal or economic position.
Requirements for Challenging a Patent
The Court found that a general allegation that a utility model does not meet the applicable patentability requirements is insufficient on its own. The claimant must establish a personal and direct interest in the invalidation of the patent. Co-ownership of a later patent does not automatically prove that the owners of an earlier patent have infringed the claimant’s rights.
The existence of criminal proceedings concerning the alleged unauthorized use of the utility model was also insufficient to substantiate the civil claim. The Supreme Court noted that civil and criminal proceedings apply different standards of proof and examine different legally relevant circumstances. Civil proceedings should not be initiated solely to establish facts that a party intends to rely on when defending itself against criminal prosecution.
The claimant’s references to expert conclusions concerning the alleged lack of novelty did not remedy the failure to prove an infringed right or legally protected interest. As this fundamental condition for judicial protection had not been satisfied, the patent remained valid despite the arguments presented regarding its compliance with the novelty requirement.
The judgment confirms that a party challenging a patent must substantiate two distinct elements: the alleged defects affecting the validity of the patent and the specific adverse effect of that patent on the claimant’s own rights or legitimate interests. Evidence concerning patentability alone may not be sufficient where the claimant has failed to establish a proper legal interest in bringing the action.