Answer ... Yes – some forms of discovery in a broader sense (understood as a procedure through which one party can obtain evidence from another by means of specific court orders) are available in patent infringement cases in Poland. They have recently been the subject of various legislative changes, aimed at improving compliance with the IP Enforcement Directive.
The latest amendments to the Act on Industrial Property adopted on 16 October 2019, which are expected to enter into force in the first quarter of 2020, provide for a special procedure for preserving evidence of IP infringements. This is separate from the general procedure for preserving evidence under the Civil Procedure Code (although some of the respective provisions of the Civil Procedure Code apply mutatis mutandis). It is also separate from the so-called ‘right to information’ procedure, which is available under another section of the Act on Industrial Property.
This special procedure is available both before lodging a lawsuit and while a suit is pending. It may relate to any evidence of infringement, such as product samples, materials or instruments used for production or distribution, as well as related documents. The procedure aims to facilitate the preservation of evidence for examination before the court. The most important requirement when initiating this procedure is to indicate that the rights holder’s claims resulting from the alleged infringement or threat of infringement are probable (which, for obvious reasons, does not require the full presentation and examination of evidence).
Further legislative changes concerning the preservation of evidence of IP right infringements are in the pipeline, as part of a new special civil procedure for IP matters which will be introduced into the Civil Procedure Code. Their adoption is expected during 2020. As currently drafted, these amendments regulate the procedure in more detail, including options such as the involvement of court bailiffs and court experts. They also introduce a separate procedure for the defendant’s disclosure of certain types of evidence (ie, bank, finance or commercial documents), which brings this even closer to ‘classic’ discovery.
Answer ... Under the latest amendments to the Act on Industrial Property, any method which makes it possible to secure or preserve evidence of an IP infringement may be considered by the court when deciding on the preservation of evidence. This includes:
- the seizure of a reasonable amount of product samples, materials or instruments used for production or distribution; and
- the seizure of related documents (following their disclosure by the alleged infringer).
As an alternative to seizure, the respective procedure may consist of a description of a certain object (considered as evidence to be preserved).
Answer ... Under the latest amendments to the Industrial Property Law, the limitations relating to the preservation of evidence, as described in questions 7.1 and 7.2, are informed by the principles of proportionality and reasonability (ie, the amount of objects to be preserved must be reasonable), as well as by the sole purpose of the special procedure of facilitating the preservation of evidence for examination before the court (contrary to provisional and precautionary measures aimed at the prevention of infringement). Another important limitation results from the requirement to respect trade secrets and other protected confidential information.