Answer ... Patents valid in Poland are either national patents granted by the Polish Patent Office (PPO) or European patents granted by the European Patent Office (EPO) which are duly validated in Poland.

The validity of a patent granted by the PPO may be challenged before the PPO in either post-grant opposition proceedings or invalidation proceedings.

The validity of a European patent granted by the EPO may be challenged either:

• after validation in Poland in invalidation proceedings before the PPO, in the same way as a national patent granted by the PPO; or
• in centralised opposition proceedings before the EPO.

Answer ... The validity of an issued patent may be challenged in either opposition or invalidation proceedings.

An opposition against a national patent granted by the PPO may be filed by any party, without any need to show a legitimate interest, within six months of publication of the details of the patent grant in Wiadomości Urzędu Patentowego. The opposition must be reasoned and based on the same grounds on which a patent may be invalidated under the Act on Industrial Property.

The validity of a patent granted by the PPO may be challenged once six months have expired since publication of the details of the patent grant in Wiadomości Urzędu Patentowego. The petition for invalidation must be reasoned show a legitimate interest of the petitioner. If no legitimate interest is evidenced, the petition for invalidation will be dismissed. There is no legal definition of a ‘legitimate interest’ in the Act on Industrial Property; therefore, the assessment is based on the general rules valid in administrative proceedings. However, under 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, the requirement to show legitimate interest in invalidation of a patent will be abolished and any third party will thus be entitled to file a petition for invalidation.

The same invalidation procedure applies to European patents which have been granted by the EPO and validated in Poland. The grounds for invalidation of European patents which have been validated in Poland are set forth in the European Patent Convention (EPC).

European patents granted by the EPO may also be challenged through centralised opposition proceedings before the EPO. The timeframe for filing a centralised post-grant opposition before the EPO is within nine months of publication of the details of the patent grant in the EPO’s official gazette. A successful centralised opposition may result in revocation of the European patent in all EPO jurisdictions, with ex tunc effect.

Answer ... According to the Act on Industrial Property, a Polish patent granted by the PPO may be invalidated in whole or in part if any of the following is proven:

• The requirements for the grant of a patent have not been satisfied (ie, the invention lacks novelty, inventive step and/or industrial applicability);
• The invention has not been disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; or
• The patent has been granted for an invention that is not covered by the contents of the application or of the original application.

According to the EPC, a European patent validated in Poland may be invalidated, in whole or in part, based on the following grounds stipulated in the EPC:

• The claimed subject matter is not patentable (ie, it lacks novelty, inventive step or industrial applicability, is excluded from patentability or does not constitute an invention);
• The invention is not disclosed in a manner that is sufficiently clear and complete for it to be carried out by a person skilled in the art;
• The subject matter of the patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application, beyond the content of the earlier application as filed;
• The protection conferred by the European patent has been extended; or
• The holder the European patent is not entitled to the patent grant.

Answer ... Requests for invalidation are decided by the PPO within the framework of the petition for invalidation and are bound by the legal grounds indicated therein. This means that the burden of proving the grounds for invalidation of the patent rests with the petitioner.

Answer ... A third party may oppose a patent granted by the PPO by filing a notice of opposition within six months of publication of details of the patent grant in Wiadomości Urzędu Patentowego. Once this six-month timeframe has expired, a third party may file a petition for invalidation of a patent, as long as it can show that it has a legitimate interest in the matter. If a legitimate interest is not evidenced, the petition for invalidation will be dismissed. 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, the requirement to show legitimate interest in invalidation of a patent will be abolished, so any third party will be entitled to file a petition for invalidation without needing to prove a legitimate interest.

The same invalidation procedure applies to European patents granted by the EPO and validated in Poland.

Moreover, in the case of European patents, any third party may file a notice of opposition with the EPO within nine months of publication of details of the patent grant in the EPO’s official gazette. The grounds and reasons for the opposition must be specified; however, there is no requirement to have a legitimate interest.

Answer ... An opposition against a Polish national patent granted by the PPO may be filed by any third party, without any need to show a legitimate interest. However, the right to file an opposition does not serve the patent holder.

In case of an opposition against a European patent, any third party may file a notice of opposition; however, this does not include the patent holder.

Answer ... Both oppositions and petitions for invalidation are filed after the publication of details of the patent grant in the respective official gazette. An opposition against a national patent granted by the PPO may be filed with the PPO within six months of publication of this information in Wiadomości Urzędu Patentowego. An opposition against a European patent granted by the EPO may be filed with the EPO within nine months of publication of this information in the EPO’s official gazette.

After the expiry of the timeframes for filing a post-grant opposition, a third party may file a petition for invalidation of a patent.

Answer ... According to the Act on Industrial Property, the grounds for opposition are the same as those invalidation, as follows:

• lack of patentability, including lack of novelty, inventive step and/or industrial applicability;
• 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; and
• extension of the subject matter of the patent beyond the contents of the original application.

In the case of a European patent, an exhaustive list of grounds of opposition is set forth in the EPC. According to the EPC, the grounds for opposition are as follows:

• lack of patentability within the terms of Articles 52 to 57 of the EPC;
• failure to disclose the invention in a manner that is sufficiently clear and complete for a person skilled in the art to carry it out; or
• inadmissible extension of the subject matter of the European patent beyond the content of the application as filed.

Answer ... In opposition proceedings before the PPO, an opposed patent may be maintained in force in unamended form, or may be invalidated in part or as a whole. At present, the possibilities to amend patent claims during opposition are very limited; usually, the only possibility is to cancel one of the claimed categories, while maintaining the others (eg, cancelling a product claim and maintaining a method claim). However, 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, it will be possible to file a request for limitation of a patent after grant. In case of opposition, this request must be filed before filing observations on the opposition. This possibility will also be available during invalidation proceedings, although in this case the request for limitation must be filed before an oral hearing.

In case of opposition proceedings before the EPO, an opposed patent may be maintained in force in unamended form, maintained in force in amended form or invalidated. Contrary to the practice before the PPO, claim amendments are allowed under certain conditions during opposition proceedings before the EPO.

Answer ... The PPO decides on opposition or invalidation proceedings within the framework of the notice of opposition or petition for invalidation, and is bound by the legal grounds indicated therein. This means that the burden of proving the grounds for invalidation rests with the opponent or petitioner.

In case of opposition proceedings, the EPO decides on the balance of probabilities, based on the grounds and evidence provided by the opponent. The burden of proving the grounds for revocation rests with the opponent.

Answer ... In litigation proceedings before the PPO, a decision on the merits issued after an oral hearing may be challenged by filing a complaint to the Administrative Court in Warsaw within 30 days of notification of the reasoned decision.

Decisions issued by the EPO in opposition proceedings are subject to appeal before the Technical Boards of Appeal. Only a party to proceedings that has been adversely affected by a decision has a right to appeal. If an appeal is duly filed, any other parties to the proceedings are parties to the appeal as of right.