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How Useful Can Be the Supreme Court on Intellectual Property?


Mariia Koval, attorney at law at Ilyashev & Partners Law Firm

On September 30 this year the Law of Ukraine “On the Judicial System and Status of Judges” becomes effective, which the parliamentarians adopted on June 2, 2016, and the President Petro Poroshenko signed a months and a half later. According to the Law, during a year after it becomes effective the Supreme Court on Intellectual Property will be created in the country (hereinafter, the Supreme Court). Mariia Koval, attorney at Ilyashev & Partners Law Firm explains special for Forbes what changes are expected in the domestic legal environment in connection with this innovation, what challenges lawyers and businessmen risk to face, and the experience of what countries can Ukraine be guided by.

The specialized courts on intellectual property exist in many countries, among them Germany, Austria, Switzerland, United Kingdom and the Russian Federation. In all abovementioned countries functioning of the specialized courts made a positive impact on the quality of consideration of cases on intellectual property and significantly reduced the terms of their consideration.

Positive changes

Creation in Ukraine of a specialized court on intellectual property has been very actively discussed over the last two years. And opinions were divided: many lawyers and patent attorneys believed that the composition of the specialized court and the quality of consideration of cases on intellectual property are unlikely to change significantly. However, undoubtedly, this move has a number of positive points.

Firstly, to date, the cases on intellectual property are considered by the courts of various jurisdictions that results in different application of the same rules of the legislation governing intellectual property. Accordingly, it creates varied judicial practice – often completely opposite.

In this aspect establishment of the Supreme Court will enable to avoid the varied law enforcement practice and unify the judicial practice.

Secondly, although specialization of judges in intellectual property cases was introduced in the courts of various jurisdictions, the judges are still overloaded by consideration of cases that are not related to this area, which does not give them the opportunity to go deeply into the very specific questions. In turn, it leads to a continuous consideration of such cases – from two to five years.

For example, the terms of consideration by patent courts of foreign countries, on average, comprise one year. Thus, the UK Patents Court as a rule considers such cases for 12-14 months, the Swiss Federal Patent Court and the Court on Intellectual Property Rights of the Russian Federation – for 12 months, and the Federal Patent Court of Germany – a maximum of 18 months.

It is envisaged that the Supreme Court will act as a court of first instance, which decisions can be appealed only to the Cassation Commercial Court, which is a part of the Supreme Court, i.e. appeal proceedings, which will certainly significantly reduce consideration of the intellectual property disputes.

Moreover, taking into account a niche specialization of the Supreme Court, the judges will not need to “get distracted” by other cases that will increase for sure the quality of consideration of the intellectual property cases and qualifications of judges.

Thirdly, in accordance with the Law the judges of the Supreme Court may be the persons who, in addition to passing the qualification evaluation, have professional experience in the field of intellectual property (patent attorney or attorney) of at least five years. The professional lawyers and patent attorneys, who have considerable experience in this area, in the composition of the Supreme Court will also contribute to a deeper and more competent approach to consideration of such specific cases.

We can also hope that the niche specialization of the judges of the Supreme Court will enable them not to take the findings of forensic expert examinations as an absolute basis of decisions (as it happens today) and consider the cases objectively, taking into account all the evidence.

Legislative gaps

Establishment of the Supreme Court is not likely to lead to reduction of costs of the parties for consideration of cases on intellectual property: the Law does not envisage the obligation of judges to have or obtain the additional technical education and, thus, it will be still necessary to carry out forensic examinations in each case.

Availability of technical education of the judges of the Supreme Court would be reasonable and logical as such requirement for the judges exists in almost all patent courts of foreign states that significantly saves time and money of the parties to the proceedings.

In Germany, e.g. the composition of judges of the Federal Patent Court includes the so-called “technical judges” (technische Richter), who have technical and legal education. Judges of the Patents courts of Great Britain and Switzerland also need to have two educations: legal and technical.

It is also unclear what kinds of cases will be considered by the Supreme Court. For example, the Federal Patent Court of Germany, the Court on Intellectual Property Rights of the Russian Federation do not consider the cases on infringement of intellectual property rights, and the Swiss Federal Patent Court considers all categories of cases, but only in respect of patents.

Certainly, after the High Court on Intellectual Property begins to work a lot of questions will arise, including in relation to its powers, but in any case the presence of a specialized court in the field is a positive and important step of Ukraine regarding the appropriate protection of intellectual property rights and investment prospects.

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