Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Enforcing patent rights in commercial or civil courts in Uzbekistan is the only viable option for patent owners. The patent owner can bring a lawsuit against an infringer before a civil court (if the infringer is a natural person) or a commercial court (if the infringer is an entrepreneur or a legal entity) and seek to stop the unauthorised use of the patent, withdraw the infringing products from the market and destroy the products. The patent owner may also seek damages and a ban on the importation, storage and distribution of infringing products by the infringer and third parties.

Administrative liability for patent infringement was introduced in 2019, but administrative fines are somewhat low (approximately €100 to €650). The action can be brought by filing a complaint with the Agency for Intellectual Property under the Ministry of Justice. The Code on Administrative Liability does not provide for the seizure and destruction of infringing products for patent Infringement.

Amendments introduced on 3 February 2022 into the Law on Inventions, Utility Models and Industrial Designs now envisage that the Agency for Intellectual Property under the Ministry of Justice can also initiate checks of legal entities based on written complaints from the patent owners and impose fines (of approximately €2180 to €4360) on the infringer. The Agency’s decisions on the imposition of fines can be challenged before the administrative court. The amendments will enter into force on 4 May 2022.

Criminal liability for patent infringement is not available in Uzbekistan.

The relative lack of experience of local courts and enforcement authorities in the IP field make it challenging to enforce patents in Uzbekistan. There are no specialised courts for patent-related lawsuits in Uzbekistan.

Uzbekistan has recently revived its World Trade Organization accession process, so the situation is expected to change for the better in the coming years.

Trial format and timing

What is the format of a patent infringement trial?

Documentary evidence and expert testimony are of crucial importance. Each party has to provide relevant and sufficient evidence in support of its position in the case. Evidence can be introduced in the form of documents, oral testimony and physical objects, etc.

Expert witnesses and reports play a vital role because judges are mostly lawyers who do not usually possess scientific or technical expertise. The courts are more inclined to take into account the opinions of experts from relevant state bodies, institutions or state-owned companies rather than the opinions of independent experts from private companies.

As of 1 September 2021, licensed attorneys-at-law can request and enter into a contract with the state or non-governmental judicial expertise organisations to produce expert conclusions before or during commercial, civil or administrative court proceedings. Before that date, only the courts could appoint judicial experts.

Cases are decided by a single judge in the first instance, by a panel of three judges at the appellate or cassation level, and by a panel of five judges in the case of a repeat cassation at the Supreme Court.

Patent-related trials in commercial courts usually last two to three months in the first instance and around the same amount of time at appellate or cassation instances; however, it may take longer if the court needs to review additional evidence or the judicial experts’ written conclusions. The cassation stage can take up to one year. In total, it can take up to one to two years to reach a final decision.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The general principle of the court procedure in Uzbekistan is that each party to a dispute has to provide relevant, acceptable and sufficient evidence in support of its position in the case.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patent owner or an exclusive licensee can sue for patent infringement. The alleged infringer can challenge at any time the disputed patent before the Board of Appeal under the Ministry of Justice. The Board of Appeal’s ruling can then be challenged before an administrative court. The legislation in force does not allow for patents to be challenged directly before courts.

In 2019, the Board of Appeal of the Agency for Intellectual Property was brought under the jurisdiction of the Ministry of Justice. The Minister of Justice is now the chair of the Board of Appeal. This measure was likely introduced to minimise the Agency’s influence on the Board of Appeal’s rulings and to ensure a more impartial review of appeals and observations.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

It is possible to file a lawsuit against multiple defendants, where some of the defendants only induce or contribute to the patent infringement; however, in this case, the final court injunction can only be obtained against an infringer who actually assembles, stores, sells or otherwise distributes the final product or process that infringes the disputed patent.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all the defendants be accused of infringing all the same patents?

Yes, multiple parties can be joined as defendants in the same lawsuit. The multiple defendants in this case must be involved in infringing the patent directly, namely by manufacturing, importing, offering for sale, selling, distributing or storing an item with the aim of distributing the final patented product, including the product made using the patented process.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Courts in Uzbekistan can accept any evidence of patent infringement, including evidence related to the foreign activities of an infringer that contribute to the infringement in Uzbekistan.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

It is possible to bring a lawsuit against an infringer that uses equivalent features to those disclosed in a patent claim. The equivalence of a certain feature to the one in the patent claim is usually evaluated on a case-by-case basis, based on written conclusions and expert evidence. There are no specific official guidelines, legislation or judicial decisions governing the scope of equivalents of a patent claim in Uzbekistan.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Unlike in common law jurisdictions, in Uzbekistan there are no pretrial procedures in a lawsuit, such as discovery.

However, as of 1 September 2021, licensed attorneys-at-law can request state or non-governmental judicial expertise organisations to produce expert conclusions before commercial, civil or administrative court proceedings.

Both the Civil Code and the Commercial Procedure Code provide for the possibility of obtaining evidence from an opponent and from third parties to prove infringement, damages and invalidity by filing a specific motion with the court that can issue a relevant ruling. Obtaining evidence from outside the country is only possible if Uzbekistan has signed multilateral or bilateral agreements allowing the exchange of information and evidence between the relevant state bodies and providing for the enforcement of respective court rulings (eg, the Commonwealth of Independent States countries).

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

On average, it takes around three to four weeks after filing a lawsuit for the first hearing to take place in a commercial court of first instance or in an appellate or cassation court after submitting an appeal. It usually takes two to three months to obtain the ruling of the first instance court or the appellate or cassation court.

The first-instance ruling can be appealed within one month of the day the ruling was announced. A cassation appeal can be filed within one year of the day the appellate court’s ruling was issued. Repeat cassation appeals can be filed either within one year of the day the appellate court’s ruling was issued or within one month of the date of the cassation court’s ruling, whichever expires later. The repeat cassation stage itself can take up to three months.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Attorneys’ fees as well as other costs (eg, translations and court expert reports) will vary depending on the circumstances and complexity of the case.

If a patent owner wishes to claim damages, the court fees for filing a court claim will constitute 2 per cent of the total amount of the claimed damages. If no damages are claimed, the court fee will be approximately €250 for each non-material claim (claims that do not require compensation for losses if the ruling is in favour of the patent owner). Official fees for appeals will be 50 per cent of the fees for filing the initial lawsuit.

On average, litigants should expect to pay between €10,000 and €30,000 to take a case through to a first-instance decision, and around the same amount for each of the appeal or cassation and repeat cassation stages.

Сontingency fees are not prohibited by law in Uzbekistan.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

A decision of the first-instance commercial court can be appealed before a higher court. The ruling of an appellate court can be appealed before the Supreme Court by filing a cassation appeal. A request for repeat cassation can be also filed with the Presidium of the Supreme Court. New evidence is allowed at the appellate stage.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

It depends on whether the patent owner has a dominant position or a monopoly in a market according to Uzbekistan’s Antimonopoly Committee, or if the patent owner otherwise violates the legislation in force.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Mediation can be attempted before the start of court proceedings. An out-of-court settlement during court proceedings is also acceptable as an alternative dispute resolution mechanism in Uzbekistan. Arbitration courts are available if a case involves a breach of patent-related contractual obligations and if the contract contains an arbitration clause.

Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Under the Patent Law, the following cannot be patented as inventions or utility models:

• scientific theories and mathematical methods;
• methods of organisation and management;
• conventional symbols, schedules and rules;
• rules and methods for performing mental acts;
• algorithms and computer programs;
• projects and plans for structures, buildings and land development; and
• solutions concerning only the outward appearance of products and aimed at satisfying aesthetic requirements.

Software per se cannot be patented. According to the Law on Legal Protection of Computer Programs and Databases, a program (algorithm) can be protected by copyright; however, if a computer program is described as a method of performing actions with material objects by means of a computer program, or a system demonstrating a connection between certain devices by means of a computer program, that is intended to solve a technical problem, it can be, in theory, patented.

Business methods per se cannot be patented; however, if a business method can be described not only as a mental process, but also as a method involving certain material objects that solves a technical problem, it can be patented.

Medical procedures can be patented, but they cannot be contrary to the public interest and principles of humanity and morality.

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The patent rights to an invention made by an employee within the scope of his or her duties, or as a result of a particular task, belong to the employer, but only if this is specified in an agreement between them. If the agreement does not include such clauses, the employee (inventor) can file an application to claim the ownership of rights. If the agreement does include the above-mentioned provision, the employer has to decide what to do with the invention (file a patent application, transfer the rights to a third party or inform the inventor that the invention will be kept secret) within four months after the employee informs him or her about the invention, in writing. If the employer fails to claim the invention and make a decision, the inventor (employee) can file a patent application and claim the ownership.

The ownership of rights to an invention created by an independent contractor, multiple inventors or a joint venture are determined by an agreement between the parties involved.

The patent owner is recorded in the letters patent and in the register of patents for inventions. To transfer the rights, the patent holder and the assignee have to sign an assignment deed and file it with the Agency for Intellectual Property. If the documents meet the requirements for the transfer of rights, the Agency will publish information on the transfer of rights in the local IP bulletin and record the new patent owner in the register.

Defences

Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

Patent validity can be challenged only on the following grounds:

• the invention does not meet the patentability requirements (novelty, inventive step and industrial applicability);
• the invention claims contain features that were not present in the application materials as originally filed; and
• the person indicated as the patent owner did not have legal basis to obtain the patent.

An invalidation action should first be filed with the Board of Appeal under the Ministry of Justice, whose decision can further be challenged before an administrative court, within six months of the date the decision was issued.

Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

‘Absolute novelty’ is one of the patentability requirements in Uzbekistan. Nevertheless, the patent law provides for a ‘novelty grace period’ during which public disclosure of the invention by the inventor, applicant or a person that directly or indirectly received information on the invention, or utility model, from the inventor or applicant, does not affect patentability. The novelty grace period is six months preceding the application filing date. An applicant or inventor is responsible for proving the disclosure.

Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

An invention is considered inventive if it is not obvious to a person skilled in the art and if it does not obviously or directly derive from the prior art.

Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

A valid patent can become invalid if it was obtained by a person who had no legal basis to obtain it; thus, if a patent owner is not the rightful owner (eg, he or she infringed the IP rights of a third party by filing an application for an invention that does not belong to him or her), the patent can become invalid.

Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

Any person who started using a solution identical to the patented one, or made preparations for using it before the application filing date or before the priority date, has the right to continue using the invention free of charge and without extending the scope of the use.

The prior use defence covers all types of inventions. The patent law does not specify what is considered ‘use’, so the defence is not limited to commercial use.

Remedies

Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damages awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

The patent holder can claim all damages arising from infringement, but the amount of damages sought must be proven using documentary evidence, a valuation professional’s written conclusions and any other relevant evidence. The law does not provide for statutory compensation for patent infringement. Instead of proving and seeking damages, the patent owner may request the recovery of the profits obtained by the infringer from sales of the infringing product or use of the patented process.

Damages start to accrue from the moment the infringement took place, provided that it took place after the date of publication of the patent application and that it does not fall under any of the exceptions (prior use, use on a transit vehicle, use for scientific purposes, etc). Damages awards tend to be nominal in that the courts in Uzbekistan usually do not grant the full amount of damages claimed in patent-related cases, even if the amount is supported by solid evidence.

Royalties are calculated on the basis of the State Assets Management Agency’s Unified National Standard of Valuation (No. 3239, dated 4 June 2020).

Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

It is possible to obtain both a temporary and a final, permanent injunction against the infringer. A preliminary injunction can be difficult to obtain, but the courts may issue it if enforcing the court’s ruling is proved to be difficult or impossible. An injunction is effective only against specific entities or persons listed in the injunction as approved by the court, and it does not automatically apply to all infringers, their customers and suppliers.

Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Are there specific tribunals or proceedings available to accomplish this?

It is possible to block the importation of infringing products into Uzbekistan, but in such cases the State Customs Committee has to be sued along with the infringer. There is no specific tribunal or proceeding for such matters.

Attorneys’ fees

Under what conditions can a successful litigant recover costs and attorneys’ fees?

A successful litigant must prove that all claimed costs, including attorneys’ fees, were relevant, reasonable and directly connected to the case in question. However, the successful party rarely recovers the claimed costs in full, especially the attorneys’ fees.

Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

There are no additional remedies applicable specifically against deliberate or wilful infringers.

Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

It is usually three years from the moment the patent owner learned about the infringement.

Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

Marking patented products is not required in Uzbekistan. The patent legislation itself does not contain provisions on the consequences of false patent marking, but this can qualify as a violation of the consumer protection and unfair competition laws and regulations.

Licensing

Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The licence agreement must be registered with the Intellectual Property Office (IPO) and must contain the following:

• the parties’ official names and addresses;
• registration number of the patent being licensed;
• the scope of the transferred rights (exclusive or non-exclusive, and specific rights);
• the territory of the agreement;
• the duration and termination of the agreement; and
• the amount of remuneration.

There are no other requirements or restrictions related to patent licence agreements in Uzbekistan.

Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

If the patent has not been used or has not been sufficiently used in Uzbekistan for at least three years after its registration date, any interested person or entity can file a lawsuit with the court to obtain a compulsory patent licence, provided that the patent owner refused to issue a voluntary licence to that person or entity.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A patent for an invention is usually granted within two to five years from the filing date, and a utility model certificate is usually granted within one to two years.

A cost estimate is about €3,600 to €5,100 for an invention (depending on whether the application type is a national or a Patent Cooperation Treaty application), and about €3,500 to €4,500 for a utility model. This estimate covers official fees and average service fees for an application with one independent claim and up to 10 dependent claims, and up to 35 pages of specifications and claims. Additional independent and dependent claims and additional pages involve extra fees. Translation costs and attorneys’ fees are not included in the estimates. Applicants are advised to obtain accurate cost estimates from the patent attorneys handling their application.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The Patent Prosecution Highway is not available in Uzbekistan. Expedited examination of patent applications was introduced on 1 April 2021.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

Invention or utility models should be drafted according to the national rules on application drafting, which give guidelines on the disclosure of each particular subject matter (substance, method, device, etc).

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no such requirement.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?

If a patent application is questioned on the ground of a lack of unity of invention, the claims that are allegedly not related to one invention can be filed within a divisional application that retains its parent application’s filing date and the same priority. This is the only case where filing a later application to pursue additional claims is possible under the legislation in force in Uzbekistan.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The decision of the Agency for Intellectual Property under the Ministry of Justice should first be appealed before the Board of Appeal, within three months of the date on which the decision was sent to the applicant. The Board of Appeal’s decision can be further challenged before an administrative court, within six months of the date the decision was issued.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Any third party may challenge a pending patent application by filing an appeal with the Board of Appeal, at any time after the application is published and up to the patent grant. As a rule, the IPO publishes an application 18 months after the application’s filing date, but it may be published earlier at the request of the applicant. The Board of Appeal’s resolution can be contested in court within six months following the date the resolution was issued.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Under the patent law, if several inventors independently created the same invention or utility model, the right to the patent belongs to the applicant whose application has the earliest filing date, or if priority is claimed, the earliest priority date. Priority disputes are resolved in court.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Modifying a patent is possible only if technical mistakes have been discovered after the patent was granted. Re-examining a patent is not possible, while revoking a patent is possible under the legislation in force. The court cannot amend patent claims during a lawsuit, as patents can only be challenged before the Board of Appeal, and if the Board of Appeal’s ruling is challenged before the court, the court can only oblige the Board of Appeal to correct its ruling, if it was unlawful, but not the patent itself.

Patent duration

How is the duration of patent protection determined?

Patent rights take effect on the date of publication of the granted patent in the local IP bulletin and last for 20 years starting from the application filing date.

Update and trends

Key developments of the past year

What are the most significant developing or emerging trends in the country’s patent law?

One positive development is that in 2020 the Agency for Intellectual Property started taking administrative actions based on complaints related to several IP rights, including patents, bringing infringers to administrative liability in accordance with the Code on Administrative Liability.

Another development, partially influenced by the covid-19 pandemic, is that the Agency started accepting purely electronic applications for trademarks, patents and other IP rights.

By Djakhangir Aripov, Head of Office at PETOŠEVIĆ Uzbekistan and Olga Kudoyar, Patent Consultant at PETOŠEVIĆ Ukraine

Reproduced with permission from Law Business Research Ltd. This article was first published in Lexology GTDT – Patents 2022. For further information, please visit: https://www.lexology.com/gtdt.