Recognizing the rights to an invention (utility model) as invalid: certain procedural features
Authors: Rapita O. 
Published: June 2023

The article is dedicated to the legal analysis of the invalidation of the rights to an invention, a utility model. The article analyzes the procedure for filing a claim to invalidate the rights to an invention, a utility model, and other procedural features of judicial protection. It was established that the institute of invalidating invention patent (utility model) was replaced by the institute of invalidating invention rights (utility model).

It has been proven that the formulation of a correct material and legal claim addressed to the court is key in determining the prospect of protection of the violated, unrecognized or contested right, and such a claim should reflect the method of protection chosen by the plaintiff.

It is substantiated that the claimant's formulation of the appropriate method of protection must correspond to the content of the right that has been violated.

It has been proven that the application of the construction of invalidation of invention rights (utility model), rather than invalidation of a patent, is more successful in the aspect of formulating a substantive legal claim addressed to the court, because it is correlated with the fact that the actual occurrence of such rights is the basis for issuance and validity of the patent, and it is the invalidity of such rights that determines the invalidity of the patent, and not the other way around.

It has been established that the legal regulation of recognition of invention rights (utility model) as invalid needs to be improved. It is justified that the issue of the further fate of the patent, which certified the rights to an invention (utility model), which was declared invalid by the court, needs to be resolved.

It has been established that invalidating the rights to an invention (useful model) has as a consequence the invalidity (invalidity) of the patent that certifies such rights, at the same time, such a provision needs to be established at the level of law in order to eliminate the existing gap in the regulation of these social relations.

It has been proven that solving the issue of making changes to the Register and the Special Information System of NOIVI on the basis of a court decision that has entered into force is a powerful means of countering the abuse of rights by persons who own a patent certifying intellectual property rights that have been declared invalid in a court of law.

It was established that in order to prevent the abuse of rights by the patent owner, the plaintiff at the stage of filing a claim can initiate the application by the court of measures to ensure the claim in the form of a ban on the transfer of rights to an invention (utility model) to any person, and a ban on the NOIP to make a decision on making any changes to the State of the patent register of Ukraine regarding such invention (utility model).

The necessity of supplementing the Law of Ukraine "On Protection of Rights to Inventions and Utility Models" with regulations stating that "recognition of rights to an invention (utility model) as invalid completely results in the invalidity of the patent that certifies such rights is substantiated. Recognizing the rights to an invention (utility model) as invalid partially results in the invalidity of the patent in the part that concerns the clauses of the formula, the rights to which were declared invalid. Such a patent remains valid only within the new scope of legal protection. The court's decision to invalidate the rights to an invention (utility model) in whole or in part, which has entered into force, is the basis for making appropriate changes to the Register."