On 1 July 2020, in order to meet the proposals of practitioners, intellectual property courts, in the form of Intellectual Property Divisions (IPDs), were introduced in Poland. This role was entrusted to five Regional Courts – in Gdańsk, Katowice, Lublin, Poznań and Warsaw. Courts of Appeal in Warsaw and Poznań deal with cases at second instance. In accordance with applicable regulations, cases involving greater technical complexity, namely cases concerning computer programs, inventions, utility models, topographies of integrated circuits, plant varieties and business secrets of a technical nature, are in principle dealt with only in Warsaw.
In practice, all civil intellectual property cases go to these five regional courts only. Prior to the changes, apart from cases concerning Community trade marks and designs handled exclusively by the Regional Court in Warsaw (its 22nd Division, then known as the Court for Community Trade Marks and Industrial Designs), intellectual property cases were handled by various regional courts throughout the country having jurisdiction over the defendant’s registered office/place of residence or the place where a tort was committed. Currently, an attempt to initiate proceedings before any court other than those mentioned above will result in the case being referred to a court in Gdańsk, Katowice, Poznań, Lublin or Warsaw having appropriate jurisdiction.
Most cases handled by the IPDs so far concern the infringement of copyright as well as trademark rights. We have also observed an increasing number of cases concerning patent infringement or actions for establishing non-infringement. What is also surprising is the growing awareness of inventors, who go to court to pursue their right to remuneration for use of an invention by entrepreneurs (patent holders). The number of such cases is growing.
Intellectual property courts deal with cases concerning industrial property rights, copyright and related rights, as well as intellectual property rights, including cases filed to prevent and combat unfair competition, to protect personal rights insofar as a personal right is used for personalizing advertisements or promoting an entrepreneur, goods and services, to protect personal rights related to scientific or inventive activities, and to protect other intangible property rights.
How do the changes work in practice?
The changes in the civil procedure (The Act of 13 February 2020 amending the Code of Civil Procedure and some other acts), which were accompanied by the creation of intellectual property courts and the introduction of a new type of cases, the intellectual property cases, with a whole range of procedural institutions in this particular category of cases, should be assessed positively. However, it will undoubtedly take time, as well as continuous professional training of both attorneys and judges, before the new system can be fully implemented to meet all its expectations. The complexity of intellectual property cases is growing, and so are the entrepreneurs’ expectations.
One of the primary goals of the amendment was to introduce courts whose judges are specialized in intellectual property law cases into the Polish judicial system. After more than one year’s worth of experience, we feel confident in saying that the implementation of the adopted guidelines is heading in the right direction. Appointing a group of judges who, in the course of their day-to-day work, handle only intellectual property law cases is conducive to specialization. Judges adjudicating in IPDs deal with an increasing number of cases involving matters of intellectual property, which broadens their experience and perspective on these, undoubtedly, complex legal issues. We have observed that the judges become increasingly more receptive and interdisciplinary in their approach, as well as show increasing willingness to understand both the technical and business background of a dispute. Disputes concerning patents or utility models are especially complex and require judges to not only know specific regulations of the industrial property law, but also to be able to read patent descriptions and understand complex issues in various fields of technology. It should be mentioned that an important role in this process is also played by court experts, whose expertise should support the judges in dealing with cases. Naturally, the longer the new regulations have been in force and the longer the judges have been adjudicating in the Intellectual Property Divisions, the higher the quality of the judges’ decisions will be. Training or exchange of views, although necessary, will never be as conducive to achieving proficiency as daily practice in dealing with intellectual property disputes. Moreover, the longer the specialized judiciary has been in operation, the less frequent will it be for different decisions to be issued in similar cases, thus making the judicial decisions more unified and rendering them more predictable for the participants in the judicial process.
Uniform practice – is it there yet?
The practitioners have expected that the introduction of specialized judiciary would bring about the application of uniform practice within the intellectual property courts, so that, in the event of a dispute arising from a specific legal matter, professional attorneys could advise entrepreneurs in a manner that is uniform, predictable and in accordance with the established practice. However, the introduction of the new judicial system for intellectual property cases has served to make the discrepancies between individual divisions, or even the practice of judges within one division, more apparent. Examples of such differences can be observed, for example, when it comes to the so-called protective letter, or granting permission to inspect the files of proceedings to secure claims, or even the approach to the system of delivering letters to attorneys using the common court information website.
Currently, the protective letter is not governed by national law. The protective letter (i.e. the letter submitted to the court in connection with an anticipated filing of a claim) is used by the potential obligor/defendant to present the Court with arguments supporting the fact that there is no infringement of an intellectual property right, and thus their view that the court’s decision to secure claims would be illegitimate. In practice, more and more often the courts deem such letters to have been submitted effectively, despite the fact that there is no pending action (i.e. before the official filing of a claim), and, when considering a request for security, they take into account the position submitted by the potential defendant/obligor. It would seem beneficial if there was an analogous way in which all courts adjudicating on intellectual property cases handled such situations, so that there was a chance to avoid the serious consequences that result from the court deeming a request to secure claims legitimate and, subsequently, issuing a decision to secure claims before first examining the position of both the plaintiff and the defendant. However, when considering requests for a decision to secure claims submitted before the filing of a claim, some judges take into account only the position of the right holders, assuming that, at this stage of the case, the position of the obligor (potential defendant) should not constitute the basis for the court’s deliberations, because it is not explicitly provided for in the provisions of law, even though at the same time it is not explicitly excluded by them. As shown by practice, the judges’ receptiveness to this extremely important problem varies significantly.
Another apparent discrepancy concerns granting the obligor/defendant permission to inspect the files of the case before the decision to secure claims is issued, or after the decision is issued but before it is delivered to the defendant/obligor. In analogous situations, some IPD judges give such a consent, while other judges refuse to give it. Further apparent differences depend on the form of security being requested, i.e. a security to be executed by a bailiff (mainly the seizure of things that, according to the allegations of the right holder, infringe their intellectual property rights) or only an obligation to cease the infringement for the duration of the trial. In the former situation, the cases are often handled more strictly, with permission to inspect the files not being granted until the decisions issued in the case are delivered.
What also varies is the individual IPD judges’ practice when it comes to referring a request for security for consideration at a hearing which is preceded by forwarding the request to the obligor so that they could take a position. More and more cases are brought to a hearing. In such instances, the potential defendant has the opportunity to present arguments supporting the fact that there is no infringement, and therefore the fact that a decision to secure claims would be illegitimate, regardless of whether the potential defendant has filed a protective letter or not.
The legislator’s intervention could eliminate the indicated differences in the practice. Proposals should be made for the protective letter to be introduced into the Polish legal order. Other indicated discrepancies should be resolved through practice itself.
When assessing the operation of IPDs after one year of their operation, it should also be noted that their inception coincided with the restrictions related to the coronavirus pandemic and the entry into force of provisions introducing the principle of conducting hearings “remotely”. This change gave attorneys and judges an additional opportunity to experience hearings in intellectual property cases conducted using a remote communication system. It is still uncertain whether the online hearing system will remain in use after the pandemic ends (the present regime is to be maintained for one year following the end of the pandemic). Such a change has its pros and cons. Most often, however, we have observed that the judges make an efficient and effective use of the opportunity to proceed over remote hearings, thereby increasing the rate at which cases are handled and allowing the parties to present their arguments more fully. The reserved and formal behaviour inherent in the courtroom setting gave way to a more relaxed attitude, with continued respect for the judge presiding over a hearing. Thus, we have seen that the courts are quicker to reply to the parties’ requests and submissions. Greater efficiency at handling cases leads to their quicker resolution and ensures that the courts use all the new procedural institutions in proceedings concerning intellectual property matters.
Is it possible to asses the outcome yet?
Certainly, the very creation of the intellectual property courts, with their judges specializing in adjudication in the area of intellectual property law, is a step in the right direction, and the experience gained so far from the proceedings before these courts seems to confirm the validity of this decision. However, it is difficult to fully assess the advantages as well as shortcomings of the court reform after one year of its being in force. It should be taken into account that some of the new legal concepts introduced by last year’s amendment to the Code of Civil Procedure have yet to be accommodated into the Polish legal order (especially the request for disclosure or issuance of evidence). Likewise, there is no uniform understanding of how the principle of prohibition to extend claims, as applicable in the civil procedure, should be applied in the context of intellectual property cases. This principle determines the scope of the procedure in commercial proceedings, whereas its application faces significant limitations in separate proceedings (such as intellectual property cases). Their scope is not yet fully defined, which raises significant doubts among practitioners. A comprehensive assessment of the amendment is further hampered by the general reluctance of judges to schedule pre-trial hearings and draw up trial plans.
It remains to be hoped that the new opportunities offered by the changes in the civil procedure, the specialization of courts and judges, as well as the increasing number of cases with a significant degree of complexity, often with an international component, will contribute to the improvement in the quality of adjudication and the consolidation of uniform practices, to the undisputed benefit of entrepreneurs and other market participants whose interests and rights are ultimately at stake in the trial. It should also be expected that the list of IPDs will gradually expand to include e.g. Kraków and Wrocław, i.e. the largest cities which have large court centres and are home to many technology companies.
Co-author: Helena Gajek, Attorney at Law, Patent & Trademark Attorney, Partner JWP Patent & Trademark Attorneys
The article was published on December 30, 2021, in Rzeczpospolita, law