Poland: Amendment To The Polish Industrial Property Law, October 2019

Last Updated: 6 November 2019
Article by Helena HG Gajek

The Amendment to the Industrial Property Law (IPL), passed by the Sejm (the lower house of the Polish parliament) on 16 October 2019 and two days later by the Senate, implements the Directive of the European Parliament and the Council on enforcing intellectual property rights, particularly with regard to the pursuit of civil law claims in infringement proceedings.

More precise provisions

The amendment introduces several new and interesting solutions to Polish law regarding applying for, obtaining, limiting, and revoking patents, largely in order to align Polish law with the European Patent Convention. Harmonizing these two legal systems will undoubtedly contribute to removing a number of discrepancies which Polish and European patent holders have had to face until now.

The amendment has added precision to the catalogue of solutions which will not be regarded as inventions (e.g. schemes, rules, and methods for performing mental acts, playing games, or doing business, as well as computer programs as such). Rules for formulating a patent description and related requirements, particularly in relation to patent claims, have also been made more precise. The term unity of invention has also been defined more precisely.

Facilitation, improvement, and simplification

Art. 37 IPL has been reworded to broaden the scope of possible amendments and supplements to invention submissions, without changing its essence, that can be made before the final patent decision is made.

It should also be noted that an important amendment has been made to Art. 47 IPL, which allows the applicant to request an international search. It will enable the applicant to obtain more detailed information on the state of the art compared to the information obtained from a search carried out by the Patent Office. This is because the applicants will have full knowledge about their invention, which will allow them to make quicker decisions and with more confidence regarding whether to seek protection for their invention in other countries (in accordance with the PCT procedure).

The amendment also introduces new provisions regulating the procedure of examining oppositions to patent decisions, which, similarly to trade marks, will now be examined by an expert assigned to a particular case and not – as has been the practice so far – by a panel set up to examine disputed cases when the objection is challenged. This change should result in smoother and quicker examinations of patent claims filed by any third parties.

The grounds for patent refusal have also been clarified by indicating that patents will not be granted when the invention has not been presented in a manner that is sufficiently clear and comprehensive for it to be carried out by a person skilled in the art, and also when the patent claims do not clearly and concisely specify the subject of the protection sought or are not entirely supported by the description of the invention. The above clarification has been unified with the grounds for patent revocation laid out in Art. 89.

The amendment has also changed the contents of the patent holder's rights (Art. 66 IPL) by providing more details regarding the catalogue of activities deemed to infringe on a patent. Under the amended act, infringement will not be limited to using, offering, putting on the market, or importing products which are the subject matter of the invention, but will now also include storing, warehousing, and exporting them (similar to patents that protect processes). The phrase 'to the necessary extent', used in relation to the exploitation of an invention, has been removed from the list of activities which do not constitute patent infringements, providing such exploitation was necessary to obtain permission to bring medicinal products to the market. As a result of this change, the activities listed in Art. 69(1)(iv) will no longer be deemed to infringe on a patent. Importantly, a provision has been added stipulating that obtaining registration or authorization referred to in section 1.4 has no effect on civil liability for putting the products on the market without the patent holder's permission, if such permission is required.

An important change for entrepreneurs is the amended Art. 89(1) IPL, which removes the requirement for the person applying for invalidation of a patent to have a legitimate interest in this action. This requirement has been key to many patent disputes heard before the Patent Office of the Republic of Poland, obliging entrepreneurs to prove that their business is at least competitive to that of the current patent holder. Until now, the parties remained uncertain of whether the Patent Office will acknowledge the opposing party's legal interest or not until the very end of the proceedings, as the parties were not informed whether this requirement had been satisfied until the announcement of the final decision in the proceedings. The absence of this condition for filing patent invalidation requests should considerably facilitate and accelerate proceedings in cases for the revocation of industrial property rights (as is now the case in trade mark-related proceedings).

Similarly to the European Patent Convention, the amended version of the Polish Industrial Property Act now includes a new provision allowing for patent limitations to be made by changing patent claims, including during ongoing opposition proceedings and patent revocation proceedings. A condition for using this option is timely submission of the application, i.e. before replying to the opposition, or before the hearing in invalidation cases. The provisions make it clear that both kinds of proceedings may be examined jointly should this facilitate or accelerate the examination.

Crucially, it has also been clarified that in such cases patent limitation proceedings during invalidation proceedings will be conducted as disputes. However, if the cases are not combined, the opposition or invalidation proceedings will be suspended. Also, the amended Industrial Property Law has introduced a new condition in this area. The suspension will be applied only if the examination of the limitation request has a direct impact on the examination of the opposition request or the invalidation request. A key provision is that a direct indication that the limited patent will not become effective from the application date is required.

The amended regulations finally eliminate the discrepancies between entrepreneurs' rights under their Polish and EU patents, which have been reported extensively by practicians until now. They will also end disputes as to whether a patent may be limited after being granted. It will become easier for entrepreneurs to conduct proceedings, especially in cases aimed at invalidating a patent, thus allowing them to put forward different forms of defence against such attempts. The new legal situation, including the more precise definition of the effects of patent limitation (retroactively), will in turn have extremely important consequences for lawsuits brought by patent holders against infringers.

Attorneys and legal advisors to represent clients in cases related to industrial designs and geographical designations

The latest amendment of the Industrial Property Act has extended the list of persons entitled to represent clients before the Patent Office. In addition to patent attorneys, legal advisors and attorneys at law will now be allowed to conduct application proceedings and maintain protection of industrial designs and geographical indications. Despite the widely discussed demands of the bar of attorneys and legal advisors, patent attorneys will remain the only recognized representative for applicants in invention and utility model proceedings, however.

Improved securing of evidence

The amendment also introduces significant changes in the area of civil law claims arising from violations of industrial property rights. Two types of protection have been identified and separately regulated: securing evidence and information, which is a token of recognition for the separate objectives and characteristics of these two legal instruments. Securing evidence (for the purpose of conducting evidentiary proceedings before a court) will require the patent holder to first prove the probability of the claim or threat of its violation. In the case of securing information (aimed at obtaining information necessary to pursue claims from the infringer), a requirement to demonstrate credible circumstances indicating a violation has been introduced.

The amended law comes into force three months after its publication in the Journal of Laws.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Patpol Kancelaria Patentowa Sp. z o.o.
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
United States
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Patpol Kancelaria Patentowa Sp. z o.o.
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions