AMCU imposes fines: abuse of declaration patent for utility model

Free is not only cheese in a mousetrap, but also someone else's experience. Therefore, remember what actions you should not do to avoid that the AMCU impose a fine of more than a million hryvnias on you.

Lesson 1. Do not register inventions and utility models which do not meet patentability criteria.

A Ukrainian enterprise back in 2005 obtained a declaration patent on utility model “Blender”.

Later, using the whole range of patentee’s rights, the utility model was entered on the Customs Register of Intellectual Property Rights Objects. The Customs Register enables the patentee to limit import of goods similar to the intellectual property object to Ukraine. It is an efficient mechanism of both protection of patentee’s rights and removal of competition.

However, since the utility model did not meet such patentability criteria as novelty, court invalidated the declaration patent from the date of its issue announcement (case No. 5011-58/15304-2012).

Lesson 2. Do not keep objects in the Customs Register after the patent is declared invalid.

The Customs Code of Ukraine obliges an owner to inform the corresponding authorities on termination of intellectual property rights to objects entered to the Customs Register.

However, invalidation of patent to utility model (and obligations arising therefrom, respectively) did not prevent the owner of the “Blender” from continuing registration of the utility model in the Customs Register.

Therefore, after invalidation of the patent for a long time any of similar products of competitors could not be cleared against customs, which limited competition unlawfully.

The AMCU detected unfair competition in such actions (violation of Article 15 of the Law of Ukraine “On Protection Against Unfair Competition) which led to fine in the amount of UAH 1,052,000 (case No. 126-26.13/113-13).