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.
Author: Helena Gajek