This year brings broad changes to the whole system of Polish intellectual property law (IPL).
This article focuses on implications for parties to a potential patent dispute.
New tools will become available both for patentees and for persons expecting to become defendants. In particular, entities interested in commencing patent infringement actions should consider whether to delay their actions until the creation of a specialised IP-court, when the law comes into force on July 1, 2020, or to proceed now . Meanwhile, as of 27 February 2020 numerous important tools have been provided both to patentees and defendants.
1. Patent limitation (since Feb 27,2020)
In Poland It has always been very problematic to defend a granted patent in part. The possibility to limit a granted patent was restricted solely to cancelling an independent claim. Similarly, in invalidity proceedings the Patent Office tended to either invalidate the patent as a whole or maintain it as a whole. There are also no procedures or established practice of filing auxiliary requests with alternative sets of claims such as before the EPO.
The new procedure is of utmost importance for the patent holders whose patents are at risk of revocation for a part which is not essential for enforcement. We hope that greater flexibility will be available, which will avoid unnecessary invalidity proceedings.
The request for the limitation of patent claims can only be filed within strictly specified dates. Namely, during the opposition proceedings, the request should be filed prior to filing a response to the opposition and during the proceedings for a patent revocation, before the first hearing.
There is a lot of flexibility, but also not much clarity, with respect to how limitation proceedings will influence pending nullity or opposition proceedings. In general, these proceedings should be suspended pending resolution of the limitation, however the limitation may also be considered simultaneously with the opposition or nullity request. This leaves uncertainty as to any possible prolongation of recognition of patent revocation or opposition actions by filing for patent limitation.
2. No need to prove legal interest to have standing in nullity proceedings (since Feb 27, 2020)
Up to now, the parties seeking patent revocation were required to prove their legal interest. This complicated the procedure and led to uncertainty of the final outcome as there was no obligation to resolve the issue of legal interest at the beginning of the dispute, and the practice of the Patent Office was to go through complete argument before legal interest was decided upon.
The new regulations completely abolish the prerequisite to prove legal interest. Thus invalidation actions will be available to anyone.
3. Obtaining patent protection for computer implemented inventions in Poland should become straightforward (since Feb 27, 2020)
Until now, the Polish Patent Office (PPO) was reluctant to grant patent protection for the computer implemented inventions. This should change now, as the amendment of law has remove the requirement for the premise of the invention to have a “direct impact on the matter”. Since this was the greatest impediment against granting patent protection, obtaining a patent for computer implemented inventions in Poland should now be possible.
4. Introduction of the specialized IP-court system (since Jul 1, 2020)
From 1 July 2020, a specialised intellectual property court will be established in Poland. It is a significant change not only for the patent owners but for the whole IP system, as the scope of matters covered by the new organisation of the proceedings is very broad, including:
- Protection of copyright and related rights,
- Inventions, utility and industrial designs,
- Trade marks,
- Geographical indications,
- Topography of integrated circuits,
- Protection of other rights on intangible assets (intellectual property matters),
- Preventing and combating unfair competition,
- The use of a personal good for the purpose of e.g. advertising or promotion of an entrepreneur, goods or services or in connection with scientific or inventive activities.
The Regional Court in Warsaw will be exclusively competent in matters of intellectual property regarding, among others: computer programs, inventions, utility models and trade secrets of the enterprise.
There is no information about the judges who will be appointed to hear the cases in the IP courts. The new organisation of the proceedings does not provide consideration of cases by “technical judges” or with the presence of lay judges with technical education. It creates uncertainty as to the direction of the changes in IP case law in the future.
Cases initiated before the entry into force of these new provisions will continue according to the previous procedure. It makes it extremely important to consider whether the initiation of an IP or patent dispute in Poland should take place before or after the introduction of the new provisions.
The law abandons bifurcation of infringement and validity for trade marks and designs. However, proceedings before the new IP court will not provide possibilities to file a counterclaim with the request for patent invalidation as a defensive tool in a patent infringement action. Patent invalidation proceedings will be resolved solely by the Polish Patent Office, as today.
FICPI’s view and involvement
All in all, the amendments are widely considered as a positive change that in the long run will lead to improving the quality of case law and its consistency. As for now, they create uncertainty about shaping the case law and practical usage of the amended provisions. This makes it extremely important to consider initiation of patent legal dispute individually in the months to come, prior to the amendment that will be effective from July 2020.
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