General Provisions
Forensic examination on intellectual property issues is a purposeful activity to obtain evidentiary information on the protection of the right to intellectual property, the content of which consists of research by forensic experts on the basis of special knowledge in the field of copyright, trademark rights for goods and services, industrial property rights, economics of intellectual property, objects, phenomena and processes, in order to provide objective and properly justified conclusions that are or will be the subject of litigation.
The subject of forensic examination in the field of intellectual property is the factual data and circumstances of the case on the properties, features, patterns of creation and use of intellectual property, their value, losses and economic transactions in relation to these objects that are important for pre-trial investigation or court proceedings and are established through the application of special knowledge in the manner prescribed by law.
Forensic examinations in the field of intellectual property are appointed mainly to resolve issues in the following categories of disputes:
- – on the recognition of the right to intellectual property;
- – violation of intellectual property rights.
Examination in the field of intellectual property is a separate type of forensic examination, and has subspecies depending on the objects of research:
Literary and artistic works
The objects of such research are works of literature, art, and science; performance of literary, dramatic, musical, musical-dramatic, choreographic, folklore and other works.
The objects of research related to computer programs and data compilations (databases) are computer programs as objects of copyright (in object/source code), databases as objects of copyright, source codes of computer programs, and information containing features of a computer program (database).
Phonograms, videograms, programs (programs) of broadcasting organizations
The objects of such research are phonograms, videograms, broadcasts (programs) of broadcasting organizations, etc.
Inventions and utility models
The objects of such research are invention, utility model, object of economic activity (device, substance, etc.), process (manufacturing technology, etc.).
Industrial designs
The objects of such research are industrial designs and industrial products.
Plant varieties
The object of research of this type of forensic examination is a plant variety, the direct carrier of which is seeds and planting material. Separate studies can be conducted on the documents available in the case file, which contain information about the properties and characteristics of the variety, namely: a patent for a plant variety and an official description of a plant variety, which indicates a set of features of a certain plant variety that has acquired legal protection.
Commercial (company) names, trademarks (marks for goods and services), geographical indications
The objects of such research are registered marks for goods and services, designations applied to goods, designations accompanying the provision of services, commercial (brand names), domain names, etc.
Trade secrets (know-how) and innovation proposals
The objects of such research are rationalization proposals, objects of economic activity in the form of technological (technical) solutions, and information on organizational decisions that are not qualified as rationalization proposals.
Economic in the field of intellectual property
The objects of such research are primary accounting documents, accounting registers, financial reporting documents, statistical reporting for relevant periods, printed and certified electronic documents, organizational, administrative planning and regulatory documents drawn up on the basis of legislative and regulatory acts, etc.
Tasks
The tasks of the examination on intellectual property issues include determining the properties of such objects, which include industrial property objects, objects of copyright and related rights, namely:
- – the study of industrial property objects, issues regarding the properties of these objects are resolved, namely: trademarks for goods and services (trademarks); commercial names; geographical indications of origin of goods; industrial designs; inventions and utility models; trade secrets and know-how; rationalization proposals; topographies of integrated circuits; plant varieties; animal breeds, etc.;
- – the study of objects of copyright and related rights, issues regarding the properties of such objects are resolved:
- – literary and artistic works (novels, poems, articles and other written works; lectures, speeches, sermons and other oral works; dramatic, musical and dramatic works, pantomimes, choreographic, other stage works; musical works (with or without text); audiovisual works; works of painting, architecture, sculpture and graphics; photographic works; works of applied art; illustrations, maps, plans, sketches and plastic works relating to geography, topography, architecture or science; translations, adaptations, arrangements and other alterations of literary or artistic works; collections of works, if they, according to the selection or order of their constituent parts, are the result of intellectual activity;
- – computer programs, data compilations (databases), if they are the result of intellectual activity according to the selection or ordering of their components;
- – performances, phonograms, videograms, programs (programs) of broadcasting organizations, etc.
A separate group consists of economic studies of intellectual property objects, in particular determining the value of rights to the listed intellectual property objects and calculating losses caused as a result of violation of rights to them.
Forensic examinations related to copyright and related rights are appointed when the court decides on infringement of the rights of the copyright owner, recognition of the use of the work, etc.
During research related to computer programs and data compilations (databases), the following tasks are solved:
- – comparison of the form and content of a computer program;
- – recognition of a computer program as an object of intellectual property;
- – recognition of the database as an object of intellectual property;
- – definition of internal and external forms of a computer program;
- – recognition of a part of a computer program as an object of copyright;
- – evaluation of the computer program;
- – evaluation of the functionality of a computer program;
- – comparison of computer programs (databases);
- – recognition of alterations of computer programs as original works.
Forensic examinations related to related rights appoint:
- – when the court decides on the violation of the rights of the owner of related rights;
- – when recognizing the use of a phonogram, videogram, transmission (program) of broadcasting organizations of work, etc.
Forensic examinations related to inventions and utility models prescribe:
- – when the court decides on a violation of the rights of the owner of the invention or utility model;
- – when a patent for an invention or utility model is declared invalid due to violation of the rights of third parties;
- – when a patent for an invention and utility model is declared invalid due to non-compliance with their terms of legal protection, etc.
Forensic examinations related to industrial designs are prescribed:
- – when the court decides on a violation of the rights of the owner of the industrial design;
- – when a patent for an industrial design is declared invalid due to a violation of the rights of third parties;
- – when a patent for an industrial design is declared invalid due to the inconsistency of the claim.
Forensic examinations related to trademarks for goods and services prescribe:
- – when the court decides on a violation of the rights of the owner of the registered mark for goods and services;
- – when a certificate for a mark for goods and services is declared invalid due to violation of the rights of third parties;
- – when a certificate for a mark for goods and services is recognized as invalid due to non-compliance of the claimed designation with the conditions for granting legal protection, etc.
Issues resolved during examinations related to literary, artistic works, etc.
- – Is the object of research (name) or part of it that can be used independently) the result of creative work according to the information specified in the case file?
- – Does the object of research (or its part that can be used independently) contain signs of an object of copyright according to the information specified in the case file?
- – Is the work (title 1) a reworking of the work (title 2)? If so, is this recycling creative?
- – Is the work (title 1) a translation of the work (title 2)? If so, is this translation creative?
- – Did the work (title 1) (or a part of it that can be used independently) take place when creating the work (title 2)?
- – Is the title (quote, character) of the work (title 1) reproduced in the mark for goods and services (title 2)?
- – Is the title (quote, character) of the work (title 1) reproduced in the commercial (company) name (title 2)?
Issues resolved during examinations related to computer programs and data compilations (databases)
- – Has there been a reproduction of a computer program (title 1) in a computer program (title 2)?
- – Are the source codes (source codes) or part of a computer program (title 1) a reworking of the source code (source code) of a computer program (title 2)?
Is a computer program (title 1) an independent, original work other than a computer program (title 2)?
- – Does the use of a computer program (name) have signs of unlicensed?
- – Does the computer program (name) correspond to the terms of reference or technical description?
- – Whether changes have been made to the computer program (name) (modifications, actions related to the functioning of the computer program in accordance with its purpose, recording and storing in computer memory, correcting obvious errors, etc.) in order to ensure its functioning on the technical means of a person (name of a legal entity or surname, name, patronymic of an individual). If so, when exactly were these changes made?
Issues resolved during examinations related to performances, phonograms, videograms, programs (programs) of broadcasting organizations
- – Does the object under investigation have signs of transmission (program) of the broadcasting organization? If so, what features of the transmission (program) of the broadcasting organization are inherent in the object under study?
- – Has there been a full or partial use of the program (program) of the broadcasting organization (name) in the process of the person’s activity (name of the legal entity or surname, name, patronymic of an individual)?
Issues resolved during examinations related to inventions and utility models
- – Does the invention under the patent (number) meet the patentability condition “inventive step” according to the case file?
- – Does the invention (utility model) under the patent (number) meet the patentability condition “novelty” in accordance with the case file?
- – Does the invention (utility model) under the patent (number) meet the patentability condition “industrial applicability” in accordance with the application (patent) materials?
- – Does the product (name) use each feature of the invention (utility model) included in the independent clause of the formula under the patent (number), or a feature equivalent to it?
- – Is each feature of the invention (utility model) included in the independent clause of the formula under the patent (number) used in the process (process/method name) or an equivalent feature?
- – Was it known before the date of filing an application for an invention (utility model) under a patent (number) application of the process (method) (name)?
- – Was it part of the art level of application of the process (method) (name) before the date of filing an application for an invention (utility model) under the patent (number)?
- – Does the case file contain information indicating that the set of essential features of the invention (utility model) under the patent (number) became publicly available in the world before the date of filing/priority of the application (number)?
Issues to be resolved during examinations related to industrial designs
- – Does the industrial design under the patent of Ukraine (number) meet the patentability condition “novelty” in accordance with the case file?
- – Is the whole set of essential features of the industrial design used in the product (name) under the patent of Ukraine (number)?
- – Does the image of an industrial design under the patent of Ukraine contain No___ well-known in Ukraine work “AAA” or its parts that have independent significance (title, quote, character)?
- – What features of an industrial design under the patent of Ukraine No___ are significant?
- – Was there a set of essential features of an industrial design under the patent of Ukraine No___, publicly available in the world before the date of filing an application with the State Enterprise “Ukrainian Institute of Intellectual Property”?
Issues resolved during examinations related to commercial (company) names, trademarks (marks for goods and services), geographical indications
- – Is the mark for goods and services under the certificate of Ukraine (number) such that did not have distinctiveness on the date (indicate the date)?
- – Does a mark for goods and services under the certificate of Ukraine (number) consist only of designations that are commonly used, as a designation of goods and services of a certain type?
- – Does a mark for goods and services under the certificate of Ukraine (number) consist only of designations or data that are descriptive when using or in connection with the goods and services specified in the certificate?
- – Is the mark for goods and services under the certificate of Ukraine (number) misleading?
- – Is the mark for goods and services under the certificate of Ukraine (number) such that can mislead about the goods, services or person who produces goods or provides services?
- – Does a mark for goods and services under the certificate of Ukraine (number) consist only of designations that are commonly used symbols or terms?
- – Is the mark for goods and services under the certificate of Ukraine (number) identical or similar to the mark for goods and services under the certificate (number) so that they can be confused?
- – Is the mark for goods and services under the certificate of Ukraine (number) identical or similar to the brand name (name) so that they can be confused?
- – Is the mark for goods and services under the certificate of Ukraine (number) identical or similar to the qualified indication of the origin of goods (name) so that they can be confused?
- – Is the designation (name) affixed to (indicate where) or applied (a) to (indicate where) identical or similar to such an extent that it can be confused with a registered mark for goods and services under the certificate of Ukraine (number)?
- – Is the mark for goods and services under the certificate of Ukraine (number) similar to the brand name (name) so that they can be confused?
Issues resolved during economic expertise in the field of intellectual property
- – What is the amount of material damage caused to the author (copyright holder) of the object of intellectual property rights as a result of the actions of a person (name of a legal entity or surname, name, patronymic of an individual)?
- – What is the market value (or other type of value according to the law) of property rights (specify the name of the object of intellectual property rights) as of the date (specify the date)?
- – Is the amount of royalties for the use of the facility correctly determined?
- – What is the minimum amount of royalties to be paid by the employer (customer) to the author of the object of intellectual property rights (name)?
An indicative list of questions that can be asked to forensic experts is determined by the Scientific and Methodological Recommendations on the preparation and appointment of forensic examinations and expert research, approved by the order of the Ministry of Justice of Ukraine dated 08.10.1998, No 53/5 (as amended by the order of the Ministry of Justice of Ukraine dated 26.12.2012, No 1950/5 with subsequent amendments and additions).
Features of the appointment
Forensic examination should be intended only to establish factual data included in the subject of evidence in the case, and cannot concern the interpretation and application of legal norms. When appointing a forensic examination on research related to the protection of intellectual property rights, courts in relevant rulings should determine very accurately the range and content of issues to be clarified by a forensic expert and the number of materials necessary for expert research. The courts should request from the parties or other persons only those materials that are reasonably necessary to establish by means of special knowledge the circumstances of the case.
