The intellectual property right holders who register changes effected within a company with the Polish Patent Office are obliged to submit relevant documentation confirming the occurrence of said changes. The correctness of the documentation ensures that a final decision will be issued to enter the requested change into the registers of the Polish Patent Office.
Despite the lack of guidelines from the Patent Office regarding the type of documentation to be accepted, patent attorneys appearing before this body, owing to their wealth of experience, are able to successfully lead the entrepreneur through the process of registering a change in the register and almost completely eliminate any potential problems related to the rejection of an application. However, what if the entrepreneur does not take the expert’s advice and instead chooses to submit incomplete documentation? Having verified the submitted documents and made a preliminary assessment that they do not constitute grounds for issuing a positive decision to make an entry into the register, the Patent Office will present its observations in the form of a written order.
Pursuant to Article 242(1) of the Act of 30 June 2000 – Industrial Property Law, the Patent Office shall set time limits for the party to perform specified acts, of no less than – one month, where the party has its place of residence or registered office in the territory of the Republic of Poland; two months, where the party has its place of residence or registered office abroad. This time limit may be extended by two months at the request of the patentee, if the entrepreneur knows that they will not be able to submit the relevant documentation or explanations within the set time limit. You should, however, bear in mind that a request to extend the time limit for submitting an official response may be filed only once and it is required to state the reason for the inability to observe the time limit. Unfortunately, should no relevant explanations and/or documentation as indicated in the issued order be submitted by the final time limit, the previously filed application to register a change is rejected on the grounds of formal deficiencies.
The most common formal deficiency which makes it impossible for the Polish Patent Office expert dealing with the case to issue an official decision to register the change is the absence of relevant certificates for persons who have signed the submitted documentation. It is worth bearing in mind that, regardless of the position held in the company by the signatory, the Office will look forward to receiving a document confirming that they are authorized to sign the documentation and thus to represent the company. Likewise, a common deficiency resulting in no official decision being issued by the Polish Patent Office are inaccuracies with regard to dates or the absence of a date on one of the documents submitted with the application.
Right holders do not always follow the advice of experienced patent attorneys representing them before the Polish Patent Office and instead determine at their own discretion whether or not the documents that they submit are sufficient. They often neglect the experts’ suggestions, while forgetting that any additional correspondence with the Patent Office, including the filing of missing documentation or explanations, entails additional costs which can be avoided. You should bear in mind that the Polish Patent Office is obliged by law to duly consider the application and documentation; should the expert examining the case see any obstacle to a positive examination of the application, no decision to enter the change into the register will be issued. In accordance with Article 229(2) and (21) of the Industrial Property Law Act, the Polish Patent Office shall examine whether the submitted documents, which are to constitute grounds for issuing a decision to make an entry into the register, do not violate the Act and are compliant in terms of their form with the applicable regulations. The Office shall also verify whether the submitted documents or explanations constitute grounds for issuing such a decision.
In the absence of observations with regard to the application and the submitted documentation, the waiting time for a decision to register the change to be issued by the Office will range from several weeks to several months, depending on the number of pending cases handled by the Office. Undoubtedly, such a scenario is more beneficial for the entrepreneur when compared to the time-consuming correspondence with the Polish Patent Office resulting from orders calling on the entrepreneur to remedy the deficiencies in the submitted documentation, which significantly prolongs the registration process of the change applied for.
5 practical tips for entrepreneurs:
- You should bear in mind that a request to extend the time limit for submitting an official response may be filed only once and it must include appropriate justification for the inability to observe the time limit.
- Each document must bear a date.
- Regardless of the position held by the signatory, the Office will look forward to receiving a document confirming their authorization.
- Any additional correspondence with the Patent Office (including the filing of missing documentation or explanations) entails additional costs.
- If you are unsure whether you have sufficient documentation to register a change, consult a patent attorney.