Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

Under the Patent Law, an invention is patentable if it:

• is new;
• involves an inventive step; and
• is capable of industrial application.

The essential criteria does not differ from the one used in most advanced patent offices worldwide.

Protection can also be granted to a utility model that meets the requirements of local novelty and industrial applicability.

What are the limits on patentability?

Under the Patent Law, the following are not patentable:

• discoveries, scientific theories and mathematical methods;
• the results of artistic concepts;
• algorithms and computer programs;
• educational or teaching methods and systems, language and grammar systems;
• methods for performing mental acts;
• rules for games or gambling activities;
• methods of business organisation and management;
• projects and plans for structures, buildings and land development; and
• the presentation of information per se (without a technical character or effect).

A patent will also not be granted for inventions that are:

• contrary to the public order;
• related to surgical, therapeutic and diagnostic methods for the treatment of humans and animals (excluding devices and substances used in such methods); or
• related to plant varieties and animal breeds, as well as primarily biological methods for plant and animal breed selection (excluding micro-biological methods and products obtained through such methods).

To what extent can inventions covering software be patented?

Software (computer programs) is not patentable per se. However, software presented as a set of logical operations executed by a computer or a comparable technical device and intended to achieve a technical effect is patentable. In addition, a computer program may be presented as a method with a set of logical operations.

To what extent can inventions covering business methods be patented?

Business methods per se cannot be patented. However, it is possible to patent a business method if it is described as a set of operations implemented by technical means and intended to achieve a technical result.

To what extent can inventions relating to stem cells be patented?

There are no direct restrictions on patenting stem cells. However, such inventions could be considered contrary to moral principles (eg, solutions related to human embryonic stem cells, for modifying the human germ line genetic identity or that use human embryos for industrial or commercial purposes).

Are there restrictions on any other kinds of invention?

No other restrictions exist with respect to patentable subject matter.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

Georgia has a grace period. Information about an invention or a utility model that became public knowledge within 12 months before the application filing date (or a priority date, if priority is claimed) will not affect patentability if:

• the information was disclosed by an inventor or their successor;
• a third party received the information, directly or indirectly, from an inventor or their successor under conditions of confidentiality; or
• the disclosure of the information was as a result of a third party acting in bad faith against an inventor or their successor.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

Under the Patent Law, a third party can file an appeal against a Georgian Patent and Trademark Office (Sakpatenti) decision with the Sakpatenti Appeal Board – the authority which handles disputes at the office. The appeal should be based on the non-compliance with patentability requirements or under Articles 16 and 17 of the Patent Law (non-patentable subject matter). The appeal should be filed within three months from the publication of the relevant decision. If the grounds for the appeal are subject to a court hearing or are based on a court decision, the appeal cannot be filed with the Sakpatenti Appeal Board, but must be filed before the competent court.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

A patent can be invalidated only in court proceedings.

How can patent office decisions be appealed in your jurisdiction?

An applicant can file an appeal with the Sakpatenti Appeal Board against office actions issued by Sakpatenti. The appeal should be filed within three months following the date of publication or issuance of the office action (eg, the refusal to grant a patent).

The board’s decision can be further appealed in court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

In practice, a patent for an invention is usually granted within two to three years from the filing date and a utility model within one year.

The official fees depend on the number of claims. For example, the official fees for prosecuting a patent with one independent claim are roughly €600 for an invention and €380 for a utility model. Translation costs and attorneys’ fees must also be considered. Applicants should obtain accurate cost estimates from the patent attorneys handling the prosecution of their application.

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

A patent owner can enforce its rights by bringing a civil claim against an infringer or by initiating criminal proceedings. However, due to the complexity of patent infringement cases, the practice of criminal investigation and relevant case law are scarce, which makes civil action through the court the most efficient way to enforce a patent owner’s rights.

What scope is there for forum selection?

A plaintiff must file a claim at the court of the same district as the infringer’s legal address; therefore, there is little scope for forum.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

The parties need not conduct any pre-trial communication; however, they can enter voluntary negotiations or a plaintiff can send a cease and desist letter to an infringer. Before initiating the proceedings by either filing a claim or applying for preliminary injunctive relief, the plaintiff should collect all necessary evidence and conduct test purchases (where required).

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Hearings are not easily delayed by defendants, as plaintiffs may file a request for the judge to schedule the decisive hearings as soon as possible. After the date for the main hearings is set, the window for delay manoeuvres is closed.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A party may challenge the validity of a patent by:

• initiating separate patent invalidation proceedings before the competent court;
• filing a counterclaim requesting to cancel a patent in response to the main lawsuit filed by the patent owner; or
• requesting the re-examination of a patent before the Georgian Patent and Trademark Office (Sakpatenti).

At trial

What level of expertise can a patent owner expect from the courts?

The overall competence of the courts in patent disputes is low. Consequently, when considering patent disputes, the courts rely on expert opinions. Authorised court experts play an important role and should be chosen carefully, when possible.

Are cases decided by one judge, a panel of judges or a jury?

In the courts of first instance, cases are decided by one judge. In the courts of appeal and cassation, cases are decided by a panel of three judges.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist in Georgia for patent disputes.

What role can and do expert witnesses play in proceedings?

Expert witnesses play a vital role because judges are often lawyers who rarely possess the relevant knowledge or expertise in scientific or technical fields. A court decision heavily depends on the opinion of a certified expert.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Georgia applies a doctrine of equivalents. Although the implementation of the doctrine is not formalised in the law, it is implemented by Sakpatenti in practice and may be applied to substantiate court claims.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

The courts are authorised to issue the following preliminary injunctions on the plaintiff’s request:

• seizure of the immovable and/or movable property (including bank accounts and other assets) of the party suspected of infringing exclusive rights on a commercial scale, if the plaintiff can prove that the recovery of the patent owner’s damages may be jeopardised;
• prohibiting the defendant from conducting activities that infringe exclusive rights or providing a security guarantee; and
• seizure of infringing goods.

The courts may use a combination of these injunctions simultaneously. Such injunctions may be imposed on parties whose services were or are used to infringe exclusive rights on a commercial scale.

The court may grant a preliminary injunction if the plaintiff can prove that:

• it would be otherwise difficult or impossible to enforce the final court decision; or
• irreparable direct damage or damage that cannot be compensated by the defendant will be caused if the preliminary injunction is not granted.

The use of a preliminary injunction is based on the court’s assumption that the plaintiff’s claim will be satisfied. The judge may ask the applicant to provide a security guarantee in return for granting an injunction.

How are issues around infringement and validity treated in your jurisdiction?

Patent invalidation and enforcement actions are not common in Georgia. More case law is needed to establish stable patterns.

The Patent Law provides a mechanism of re-examination before Sakpatenti, which is a more efficient procedure than a court action – mainly because the re-examination is conducted by a board of experts. The board of experts conducts re-examination within one month from its creation. A request for re-examination can be filed within the term of the patent validity on the grounds that the invention does not meet the patentability criteria. A re-examination decision may be appealed by an interested party before the administrative court.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Decisions from other jurisdictions may be used to substantiate a claim; however, judges are not officially obliged to take them into consideration.

Damages and remedies

Can the successful party obtain costs from the losing party?

Procedural costs (eg, the official fees for filing a lawsuit) are imposed on the losing party by the court. If the successful party wishes to recover legal fees, it should submit a legal services contract and an official extract from the attorney’s bank account reflecting the remittance. The amount of recoverable legal fees is decided by the judge, following consideration of the difficulty and circumstances of the case. The maximum amount of legal fees that can be obtained from a losing party in non-proprietary disputes is Lari2,000 (approximately $740) or up to 4% of the claimed damages in proprietary cases.

What are the typical remedies granted to a successful plaintiff?

The typical remedies are:

• compensation for damages (including lost profits), available only when the defendant was aware of patent infringement;
• confiscation of the profits gained by infringing the patent; and
• lump sum compensation.

The plaintiff may also demand that the defendant is prohibited from:

• using the product protected by the patent in the course of trade (eg, producing, selling or importing);
• using a patented method or offering it for sale; and
• using the product directly made by the patented method in the course of trade (eg, producing, selling or importing).

In addition, the plaintiff may demand:

• the removal of the infringing goods from civil circulation or the confiscation of infringing goods imported or stored in Georgia for the purpose of inclusion into civil circulation;
• the destruction of infringing goods; and
• the destruction of machinery, technical equipment and tools designed for making infringing goods.

How are damages awards calculated? Are punitive damages available?

Damages are awarded on a case-by-case basis, considering various circumstances and factors, including:

• the nature of the infringement;
• the profits gained through the infringement;
• the economic and moral damage caused to the rights holder; and
• the expected income that would have been gained by the rights holder as a result of the lawful use of the patent.

The lump-sum compensation should at least equal the amount that the infringer would have paid for a relevant patent licence. When determining the compensation amount, the court will consider:

• the quantity of goods produced while infringing the rights deriving from a patent;
• the infringer’s intent;
• the scale, character and other features of the service offered infringing the rights deriving from the patent; and
• other relevant circumstances.

Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

It is common for the courts to prohibit a defendant from further use of infringing goods in the course of trade (eg, producing, selling and importing), provided that the plaintiff can prove such use. It is also common for the courts to prohibit the use of a patented method or product made directly by a patented method.

The option to seize and destroy patent-infringing goods was introduced in December 2017; however, considering the court practice in trademark disputes, the destruction of infringing goods is likely if the plaintiff proves the patent infringement.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Obtaining a first-instance decision takes approximately 12 to 18 months. This process cannot be expedited.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Depending on the complexity of the dispute, the approximate total cost should range from approximately $10,000 to more than $50,000. A more accurate estimate should be obtained in every case – the amount stated here is for reference purposes only.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Georgian legislation does not outline the specific circumstances under which a losing party is deprived of the right to appeal a first-instance decision. However, if the losing party wishes to challenge the court of appeal (second-instance) decision, the Supreme Court (cassation court) will consider the claim only if:

• the case concerns a juridical problem, the consideration of which would help in the development of justice and uniform court practice;
• the Supreme Court has not issued decisions on similar legal issues before;
• the re-consideration of the case by the cassation court may result in a change to existing Supreme Court practice;
• the court of appeal decision contradicts Supreme Court practice;
• the court of appeal has seriously violated material and/or procedural law and this had a substantial effect on the decision; or
• the court of appeal decision is in conflict with the Convention for the Protection of Human Rights and Fundamental Freedoms and the case law of the European Court of Human Rights.

Proceedings at the court of appeal or the Supreme Court normally take between six months and one year.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

The parties may agree to settle the dispute through mediation or arbitration.

By Olga Kudoyar, Patent Consultant at PETOŠEVIĆ Ukraine and Mayya Pak, Associate and Attorney at Law at PETOŠEVIĆ Russia

This patent guide first appeared on Lexology.