Comparative Guides

Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.

Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.

Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.

4. Results: Answers
Patents
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
Poland

Answer ... Patents valid in Poland are granted by the Polish Patent Office (PPO) or the European Patent office (EPO), in the latter case where a European or Patent Cooperation Treaty (PCT) application designates Poland and a petition for validation of the European patent has been duly filed with the PPO following grant of the European patent. If the European patent is duly validated in Poland, it gives the patent holder the same rights as a Polish national patent granted by the PPO and is subject to the same limitations as a national patent.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.2
What is the cost of registration?
Poland

Answer ... The official filing fee for a standard Polish patent application is PLN 550 for a hard-copy filing and PLN 500 for an electronic filing, provided that the application does not exceed 20 pages (description, claims and drawings). For each page above this limit, an additional fee is due. If the application claims earlier priority, an additional fee of PLN 100 for each priority claimed is due. After patent grant, a fee of PLN 90 for publication of the details of the grant and patent specification is due, provided that the specification – including claims and drawings – does not exceed 10 pages. For each page above this limit, an additional fee of PLN 10 is due.

The official fee for publication of information on the validation of the European patent in Poland is PLN 90, provided that the specification – including claims and drawings – does not exceed 10 pages. The fee for each additional page over this limit is PLN 10.

To maintain patent protection after grant, annual fees must be paid. For national patents, an initial annuity fee of PLN 480 covers the first three years of protection (as of the filing date). Further annuity fees ranging from PLN 250 to PLN 1,550 are then payable on an annual basis. Annuity fees for European patents validated in Poland become due in Poland upon publication of the details of the patent grant by the EPO; the amounts are the same as those for national patents.

The annual fee for each year of protection under a supplementary protection certificate is PLN 6,000.

The registration costs for European applications are much higher and usually amount to at least €4,565, including the costs relating to filing and grant. Additionally, during prosecution of an application, renewal fees for a European patent application must be paid from the third anniversary of the date of filing of the European patent application until patent grant. The amount of these renewal fees ranges from €470 to €1,575, depending on the anniversary year. After grant of a European patent, it must be validated in Poland through separate national proceedings.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.3
What are the grounds to reject a patent application?
Poland

Answer ... Patents are granted by the PPO – regardless of the field of technology – for any inventions which are new, involve an inventive step and are susceptible of industrial application. The following in particular are not recognised as inventions:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, doing business or playing games;
  • creations or methods which are incapable of exploitation as evidenced under generally accepted and recognised principles of science; and creations or methods whose capacity for exploitation cannot be proved, or whose exploitation will not yield the result expected by the applicant, in light of commonly accepted principles of science;
  • computer programs; and
  • presentations of information.

The latest amendment to the Act on Industrial Property adopted on 16 October 2019, which will enter into force in the first quarter of 2020, provides that the following will not be recognised as inventions:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games or doing business;
  • creations or methods whose capacity for exploitation cannot be proved, or whose exploitation will not yield the result expected by the applicant, in light of commonly accepted principles of science;
  • computer programs; and
  • presentations of information;

However, this will be the case only if the application refers to such subject matter as such.

The following are also excluded from patent protection:

  • inventions whose exploitation would be contrary to public order or morality – in this regard, the exploitation of an invention is not deemed to be contrary to public order or morality merely because it is prohibited by law;
  • plant and animal varieties, and essentially biological processes for the production of plants or animals – this provision does not apply to microbiological processes and products obtained through such processes. Under the latest amendment to the Act on Industrial Property adopted on 16 October 2019, which will enter into force in the first quarter of 2020, products produced directly through essentially biological processes for the production of plants or animals will also be excluded from protection; and
  • surgical, therapeutic and diagnostic methods for treatment of humans or animals – although this provision does not apply to products, in particular substances and compositions, applied in diagnostics or treatment.

Currently, a patent application may be rejected if:

  • it does not comply with the formal or patentability requirements, such as novelty, inventive step, industrial susceptibility or sufficiency of disclosure; or
  • the subject matter of the application is not recognised as an invention.

In accordance with the latest amendment to the Act on Industrial Property adopted on 16 October 2019, which will enter into force in the first quarter of 2020, the above list of grounds for rejection of a patent application will be expanded to encompass the following:

  • failure to disclose the invention in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art;
  • lack of a clear and concise definition of the subject matter in the patent claims; and
  • lack of support in the description for the claims in their entirety.

Before issuing a refusal, the PPO will invite the applicant to file observations or correct deficiencies within a specified timeframe. This is usually two months from notification of the invitation and may be extended once by a further two months.

Analogous grounds for rejecting a European application are set forth in the European Patent Convention (EPC) and such applications may be rejected due to non-compliance with the EPC.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
Poland

Answer ... There are two options to accelerate proceedings before the PPO:

  • the Patent Prosecution Highway programme, including the Global Patent Prosecution Highway (GPPH) programme: and
  • accelerated publication of an application.

Both are available on the applicant’s request.

Under the GPPH, it is possible to accelerate grant proceeding by filing a request for accelerated processing at any participating office based on work products – including PCT work products – from another participating office. The PPO has signed bilateral agreements with the China National Intellectual Property Administration and the Taiwan Intellectual Property Office. Moreover, as of 6 January 2017 the PPO jointed the GPPH programme.

The patent offices currently participating in the GPPH programme are:

  • the Intellectual Property Office of the United Kingdom;
  • the Intellectual Property Office of Singapore;
  • the Intellectual Property Office of New Zealand;
  • the Superintendence of Industry and Commerce of Colombia;
  • the Danish Patent and Trademark Office;
  • the Estonian Patent Office;
  • the Finnish Patent and Registration Office;
  • the Federal Service for Intellectual Property of the Russian Federation;
  • IP Australia;
  • the Icelandic Patent Office;
  • the Israel Patent Office;
  • the Japanese Patent Office;
  • the Canadian Intellectual Property Office;
  • the Korean Intellectual Property Office;
  • the National Institute for the Defence of Free Competition and the Protection of Intellectual Property of Peru;
  • the National Institute of Industrial Property of Portugal;
  • the Nordic Patent Institute;
  • the Norwegian Industrial Property Office;
  • the Austrian Patent Office;
  • the PPO;
  • the Swedish Patent and Registration Office;
  • the Spanish Patent and Trademark Office;
  • the Hungarian Intellectual Property Office;
  • the United States Patent and Trademark Office; and
  • Visegrad Patent Institute.

The prerequisites to participate in the GPPH programme are as follows:

  • A patent application with the same content and the same filing date or priority date must previously have been filed with a GPPH partner office; and
  • The office of first filing must have considered the invention to be patentable – at least for one patent claim (ie, it has granted a patent or issued a positive search report).

Regardless of where the earlier application was filed, an office of later examination may, on the applicant’s request, use the results of the earlier examination performed by the office of earlier examination, thus accelerating the national proceedings.

A second option to accelerate the proceedings is to file a request for earlier publication of the patent application. This request must be filed within 12 months of the claimed priority date. This will result in publication of the patent application within 18 months of the priority date claimed and thus the earlier start of examination proceedings.

For European applications, there are three options to accelerate proceedings:

  • the accelerated procedure under the PPH;
  • earlier publication; and
  • accelerated prosecution of a European patent application using the PACE programme. A PACE request must be filed online and may be filed once only during each stage of the procedure (ie, separate requests must be filed for search and examination, and for one application at a time).

For more information about this answer please contact: Marta Kawczynska from Polservice
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
Poland

Answer ... Both the PPO and the EPO consider that certain claim formats are not permissible. Their practice in this regard is to a large extent harmonised. Accordingly, claims directed to subject matter which cannot be recognised as an invention or which is excluded from patent protection are not permissible. Furthermore, claims directed to inventions which are excluded from patent protection by law are not permissible.

The first class of non-permissible claims constitutes claims pertaining to inventions whose exploitation would be contrary to public order or morality. The second class constitutes claims directed to plant or animal varieties or essentially biological processes for the production of plants or animals. Once the latest amendments to the Act on Industrial Property enter into force in the first quarter of 2020, this class will also include products obtained by essentially biological processes for the production of plants or animals. The third class relates to surgical, therapeutic or diagnostic methods for the treatment of humans or animals. This third class does not encompass claims directed to products, and in particular to substances or compositions used in diagnostics or treatment.

Claims directed to inventions relating to any of the following are also non-permissible:

  • the human body at the various stages of its formation and development;
  • the simple discovery of an element of the human body, including the sequence or partial sequence of a gene;
  • the cloning of human beings;
  • modification of the germ line genetic identity of human beings;
  • the use of human embryos for industrial or commercial purposes; and
  • modification of the genetic identity of animals which is likely to cause them suffering without any substantial medical benefit to humans or animals, and any animals resulting from such processes.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
Poland

Answer ... In the case of medicinal products and plant protection products, patent protection may be extended by applying for a supplementary protection certificate (SPC) in accordance with EU Regulation 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products and EU Regulation 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products, respectively. SPCs take effect on the expiry of a national or European patent valid in Poland, and can extend the term of protection for a product protected by a basic patent by up to five years. The purpose of the SPC is to compensate the patent holder for the reduced duration of its patent monopoly due to the need to obtain marketing authorisation, which is a protracted process. The duration of an SPC for a medicinal product may be extended by a further six months under certain conditions in the case of paediatric clinical trials. This regulation aims to incentivise the pharmaceutical industry to investigate and develop medicines that are suitable for use in children.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.7
What subject matter is patent eligible?
Poland

Answer ... Neither the Act on Industrial Property nor the EPC provides a legal definition of an ‘invention’. They merely state that in order to be eligible for patent protection, an invention:

  • may fall within any field of technology; and
  • must be new, involve an inventive step and be susceptible of industrial application.

However, both include a non-exhaustive list of solutions which are not considered to be invention. These are generally as follows:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, doing business or playing games;
  • creations whose incapability of exploitation may be proved under generally accepted and recognised principles of science;
  • creations or methods whose capability of exploitation cannot be proved, or whose exploitation will not yield the result expected by the applicant, in light of commonly accepted principles of science;
  • computer programs; and
  • presentations of information.

At present, the EPO excludes the patentability of the above subject matter only to the extent to which a European patent application or European patent refers to it as such. Likewise, the latest amendments to the Act on Industrial Property adopted on 16 October 2019, which will enter into force in the first quarter of 2020, will further provide that the exclusion of such subject matter is valid only to the extent that the application refers to it as such.

Furthermore, both the Act on Industrial Property and the EPC set out a non-exhaustive list of inventions which are excluded from patent protection. These include:

  • inventions whose exploitation would be contrary to public order or morality – in this regard, the exploitation of an invention will not be deemed to be contrary to public order or morality merely because it is prohibited by law;
  • plant and animal varieties, and essentially biological processes for the production of plants or animals – this provision does not apply to microbiological processes and products obtained through such processes. Under the latest amendment to the Act on Industrial Property adopted on 16 October 2019, which will enter into force in the first quarter of 2020, products produced directly through essentially biological processes for the production of plants or animals will also be excluded from protection; and
  • surgical, therapeutic and diagnostic methods for treatment of humans or animals – although this provision does not apply to products, in particular substances and compositions, applied in diagnostics or treatment.

In the biotechnology field, the following subject matter is also excluded from patentability:

  • the human body at the various stages of its formation and development;
  • the simple discovery of an element of the human body, including the sequence or partial sequence of a gene;
  • the cloning of human beings;
  • modification of the germ line genetic identity of human beings;
  • the use of human embryos for industrial or commercial purposes; and
  • modification of the genetic identity of animals which is likely to cause them suffering without any substantial medical benefit to humans or animals, and any animals resulting from such processes.

For more information about this answer please contact: Marta Kawczynska from Polservice
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
Poland

Answer ... If the PPO rejects a patent application, the applicant may file a request for re-examination within two months of notification of the PPO’s decision. The decision is not liable to execution during this period. Another option is to file a complaint with the Administrative Court in Warsaw against a decision or order of the PPO within 30 days of notification of this decision. Effective filing of a request for re-examination or complaint depends on payment of a specific fee within the same timeframe. The Administrative Court will not examine the case on the merits, but will only examines whether the PPO’s decision was issued correctly (ie, in accordance with both procedural and material law).

If the EPO rejects an application, the applicant has a right to appeal. At the first stage –interlocutory revision – if the examination department whose decision is appealed considers the appeal to be admissible and well founded, it will rectify its decision. Otherwise, the appeal will proceed to the second stage – consideration by the Boards of Appeal.

For more information about this answer please contact: Marta Kawczynska from Polservice