Patent Litigation 2018 Comparisons

Last Updated November 12, 2018

Law and Practice

Authors



LDS Łazewski Depo & Partners brings together lawyers (advocates and legal advisers), patent attorneys, European patent attorneys and European Community trade mark and design agents to deliver the best service to their clients. As well as monitoring Polish and European case law and legislative developments, the firm is always on the lookout for “make-law” cases and cases on the cutting edge of Polish and European IP – cases where from the outset there is potential for a preliminary reference to the European Court of Justice or the Enlarged Board of the Supreme Court of Poland. This vigilance has led to LDS partners and associates being involved in numerous landmark cases that have given rise to a new understanding of the law or introduced from other jurisdictions legal concepts hitherto unknown in Poland. In terms of patent practice, the firm possesses particular knowledge and experience in pharma patent enforcement and defence, process-driven matters (European Patent validations), and obtaining Supplementary Protection Certificates.

The Polish legal system is based on statutory law which is interpreted and applied by the courts and relevant authorities. Case law does not bind courts nor administrative bodies, even when cases are based on similar facts and legal grounds, but it constitutes an important and persuasive source of legal argumentation.

In the Polish legal system inventions are protected by patents. The Act of 30 June 2000 – Industrial Property Law (O.J. No 2017.776, dated 13 April 2017; hereinafter "IPL") is the sole act providing for protection of industrial property rights with an exclusive right. IPL does not contain a definition of an invention and the legal writing generally defines it as a patentable technical solution (ie, a solution that is not excluded from patenting and has a technical character).

Patent may be granted for an invention, in all fields of technology, which is new, involves an inventive step and is susceptible of industrial application.

For those inventions which do not meet the criterion of an inventive step, but which are nevertheless useful, a utility model right may be granted instead, also during patent prosecution procedure or within two months from the date on which a decision to refuse a patent becomes final. Such a conversion is available for solutions of a technical nature affecting shape, construction or durable assembly of an object.

To a certain extent, personal rights stemming from own inventive activity are protected by the civil code which contains general provisions on protection of personal rights.

The patent/utility model is granted by virtue of an administrative decision.

The procedure is instituted by filing an application with the Patent Office. The Patent Office classifies it and drafts a search report. At this point an applicant may be requested to complete or correct the application. Furthermore, an examination as to formal and legal requirements is conducted. At this point, the Patent Office may issue a notice on obstacles to grant an exclusive right.

The applicant may correct the patent application or supplement it until a decision on grant of the patent is issued. The corrections or amendments cannot extend beyond the subject-matter of the disclosure made on the filing date of the application.

If the applicant corrects or completes the deficiencies, the Patent Office drafts a state-of-the-art report, followed by a publication of the application immediately after 18 months from the date of priority, as well as the substantive examination. During this phase an applicant may be requested to complete or correct an application or be notified on the obstacles to grant an exclusive right.

The above procedure is concluded by a decision on the refusal to grant the protection (which is appealable), or by a decision on the grant of a patent/utility model.

The granting procedure lasts approximately seven years, although in some cases the procedure has only been completed after ten years. The longest patent prosecution in our experience took 19 years. The timing mainly depends on the field of the technology of an invention and the complexity of the case at hand.

In principle, an inventor/patent owner does not need representation to initiate grant proceedings. This rule applies to domestic entities (physical persons domiciled in Poland or legal persons having their registered seat in Poland) and to the persons or entities domiciled or having a registered office in the territory of the  European Union, a member state of the European Free Trade Agreement (EFTA) – ie, a party to the European Economic Area Agreement or the Swiss Confederation.

Nevertheless, if an inventor wants to file a patent application by a representative, he or she must be represented by a patent attorney.

An individual domiciled in Poland may also be represented by a joint right-holder or parents, spouse, siblings, descendants or persons related by adoption to the applicant.

Any person or entity from outside the European Union or EFTA countries must be represented by a patent attorney.

Filing an application is subject to a basic fee of PLN550 (PLN500 in the case of online applications) plus additional fees based on the number of pages of the patent description and the subsequent annual renewal fees. The official fees are also required for claiming priority and publication of grant. Preparation of a patent application, co-ordination of its filing and representation in grant proceedings is subject to professional legal fees agreed with a patent attorney.

The term of a patent is 20 years, counted from the date of filing of the patent application with the Patent Office.

The term of a right of protection of utility model is ten years, counted from the date of filing of a utility model application with the Patent Office.

The owner of an intellectual property right (a patent, in this context) enjoys the exclusive right to exploit the invention, for profit or for professional purposes, throughout the territory of the Republic of Poland.

The patent-owner has the right to prevent any third party not having his or her consent from exploiting their invention for profit or for professional purposes by way of performing the acts consisting of:

  • making, using, offering, putting on the market a product that is the subject-matter of the invention, or importing the product for such purposes; or
  • employing a process that is the subject-matter of the invention, as well as using, offering, putting on the market or importing for such purposes the product directly obtained by that process.

A patentee whose patent has been infringed, or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully profits and in the case of wilful infringement also to compensate the damage.

The patentee may also demand the cessation of acts threatening the infringement of the patent. The patentee can prevent any activities that carry the possibility of such infringement, even if the infringement has not happened yet.

The patentee has the right to authorise (license) any third party to exploit his or her invention (licence agreement), to assign a patent, make it subject to a pledge, dispose mortis causa, etc.

A patentee may indicate, in particular by means of marking products with an appropriate sign, that the invention therein incorporated enjoys patent protection.

A patentee is not obliged to exploit the invention, but neither he or she nor the licensee may abuse the patent, in particular by preventing the invention from being exploited by a third party, if such exploitation is necessary for the purpose of meeting home-market demands and is particularly dictated by public interest considerations, and the product is supplied to consumers in an insufficient quantity or of inadequate quality, or at excessively high prices. This limitation does not apply within the period of three years from the date of the grant of the patent.

Inventions relating to pharmaceutical products, in particular new compounds, compositions, use of active ingredient, etc, as well as those concerning plant protection products may be protected by a Supplementary Protection Certificate ("SPC") after the lapse of the patent protection.

Supplementary protection certificates were introduced in Polish patent law on the date of Polish accession to the European Union. As the provisions governing the SPC system have been provided for in Community Regulation No 469/2009 of 6 May 2009 on supplementary protection certificate for medicinal products, general rules are the same as in other European countries. A Supplementary Protection Certificate may be granted if the following prerequisites are met:

  • the product is protected by a basic patent in force;
  • a valid authorisation* to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/EC, as appropriate;
  • the product has not already been the subject of a certificate;
  • the authorisation referred to above* is the first authorisation to place the product on the market as a medicinal product.

In practice, the Polish Patent Office adopts a very strict approach to interpretation of the prerequisites for grant of SPCs. For instance, a product is considered to be protected by a basic patent only if it is explicitly listed by INN in the claims, and the NeurimCJEU judgment’s application by the Patent Office is limited to cases which are identical or almost identical with the facts of the Neurimcase.

The strict approach of the Polish Patent Office has resulted in a number of SPC cases pending before administrative courts, many of which led to the more liberal assessment. Obtaining SPCs in Poland in non-obvious matter is still rather challenging.

Third parties do not have the right to participate during grant proceedings. Before the patent application is published, a third party may only request that the basic information on pending patent application is provided, such as its number, date of filing, title and the name of the applicant.

Once the patent application is published, a third party may obtain the access to the patent description of the filed application. From this moment, it is possible to file third-party observations concerning the obstacles against the grant of the patent. The Patent Office is not obliged to consider third-party observations, nor to respond to them in any separate office action. A decision on refusal to grant the patent is not publicly available, so a third party does not know whether its observations have been taken into account or at least commented on by the Patent Office. An access to the contents of the decision could be requested on the basis of the freedom of information procedure, but the Patent Office could require a third party to prove its legitimate interest (ie, a specific relationship between the party’s legal situation and the patent application in question) in obtaining such access.

An applicant may file a request for reconsideration of a decision on refusal to grant the intellectual property right. This request is examined by the Board of Appeal of the Patent Office. If a request is not accepted, an appeal against the decision of the Board of Appeal may be filed to the Voivodship Administrative Court (VAC) and, finally, to the Supreme Administrative Court.

Since 1 June 2017 it is also possible to file the appeal to the VAC directly after the refusal is issued – ie, the request for reconsideration is no longer a mandatory remedy. The new law may be expected to accelerate grant proceedings.

Fees for subsequent protection periods are payable in advance, within one year before the day of expiry of the preceding protection period, but not later than on that day. The fees are reimbursed, if before the said time limit the exclusive right has been invalidated or has expired. The fees paid for the lapsed protection periods and a fee for the current protection period are not reimbursed.

The annual renewal fees may also be paid within six months after the expiry of the protection period, but a surcharge amounting to 30% of the due fee must be paid simultaneously. This additional deadline is neither extendable nor restorable.

A failure to pay the annual fee within the prescribed time limit leads to expiry of a patent. The deadline for payment of the annual fee cannot be restored under any statutory provision. However, in exceptional circumstances – mainly amounting to vis major which a patentee must duly evidence – it is deemed that the time limit for payment was suspended during the period affected by those extraordinary circumstances and, subsequently, the deadline is calculated excluding the period of suspension. Extraordinary circumstances are considered by the Patent Office very strictly. An event of force majeure is accepted, while a "human error" is never considered a rightful extraordinary circumstance. 

Patent rights are enforced in the course of a civil action before common courts (infringement proceedings).

The patentee may also submit a motion for preliminary injunction prior to or during the infringement proceedings (for details, see 2.6 Interim Injunctions below).

It should be noted that a preliminary injunction is an essential measure for effective patent protection in Poland because the duration of the patent infringement proceedings (when no monetary claims are pursued) exceeds five years, often ending after the expiry of the patent which automatically leads to the dismissal of claims for formal reasons. 


Polish law provides also for other, rarely applied measures, such as a request for preservation of evidence, and a motion for a preliminary injunction by obliging the infringer of a patent to provide information concerning the infringement (a request for information – for details, see 2.6 Interim Injunctions below).

Poland has a bifurcated system with validity and infringement actions examined separately. While infringement cases are recognised by common civil courts, the validity of a patent must be challenged in a separate action at the Polish Patent Office. Appeals from decisions concerning the validity are assessed by administrative courts. Polish courts tend to refuse to consider validity arguments in most cases (also in preliminary proceedings).

The validity of a patent may be challenged in the post-grant opposition proceedings for which there are no particular standing to sue requirements. The deadline to file the opposition is six months from the date of the publication of the decision to grant a patent in the Patent Office Bulletin.

The most often applied measure is a motion for invalidation of a patent. Patent may be invalidated in whole or in part at the request of any person having a legitimate interest therein, who is able to prove that the statutory requirements for the grant of a patent have not been satisfied. Proving a legitimate interest is essential but causes significant difficulties in practice due to the vague wording of the legal provision and dissenting judicial views. In summary, the applicant must prove that the patent in question represents an actual, specific, direct and real impediment for the applicant’s own business.

If the defendant claims invalidity of the patent in the infringement proceedings, the court may stay these proceedings until the invalidity case is resolved by the Polish Patent Office.

Another measure which a defendant or a potential defendant may apply, although it happens extremely rarely in practice, is the request for a compulsory licence.

A compulsory licence may be granted in three situations: (i) when it is necessary to avoid or remove a threat to the national security; (ii) in the case of the abuse of the patent by the patentee; and (iii) in the case of dependence of the patents. A compulsory licence may be granted when the applicant can prove that he or she has made previous attempts in good faith to obtain a voluntary licence. It is not necessary to meet this requirement when the compulsory licence is granted to avoid or remove a threat to national security, or in the case of the announcement of the possibility of applying for a compulsory licence.

A compulsory licence is a non-exclusive licence and the licensee is required to pay a licence fee.

The infringement cases are recognised by non-specialised, common civil courts and there are no technical judges either. Regional courts have jurisdiction in first instance. Judgments of the regional courts may be appealed to the courts of appeal (second instance). Under certain circumstances explicitly set out by the law, the final and legally binding judgment of the court of appeal may be subject to a cassation appeal to the Supreme Court, which is an extraordinary legal remedy, and the Supreme Court may refuse to decide a case.

Invalidation proceedings are pending before the Patent Office in the administrative procedure. The decisions of the Polish Patent Office (both first-instance and the second-instance decisions) may be appealed to the Voivodeship Administrative Court in Warsaw. Judgments of the Voivodeship Administrative Court in Warsaw could be further appealed to the Supreme Administrative Court but the cassation appeal in the administrative course of action is not an extraordinary appeal and, once filed, has to be decided.

There are no special prerequisites to filing a lawsuit in intellectual property matters. However, the plaintiff is obliged to inform the court in the statement of claim whether the parties have attempted to resolve the dispute through mediation or other alternative method of dispute resolution. The plaintiff may bear the costs of proceedings if the legal action is instituted without any attempt to resolve the dispute amicably.

The parties in intellectual property matters may act before the civil courts in person or may be represented by a qualified attorney (advocate, attorney-at-law or patent attorney).

Notwithstanding the above, in the proceedings before the Supreme Court the parties must be represented by a qualified attorney (an advocate or an attorney-at-law, and in industrial property matters also by a patent attorney).

In invalidation proceedings before the Polish Patent Office, the parties may act in person or be represented by a patent attorney, an advocate or an attorney at law.

A preliminary injunction (PI) may be requested prior to or during main proceedings.

In order for the preliminary injunction to be granted, an applicant must corroborate (i) the infringement and (ii) legitimate interest in obtaining the PI.

The corroboration of claims is understood twofold: firstly, this is understood as providing such evidence that is sufficient to establish that the claims are probable. Secondly, corroboration means that not all formal requirements have to be fulfilled for the evidence to be accepted in the PI proceedings. For instance, during the main action issues requiring special knowledge have to be proved by a court-appointed expert opinion, while in the PI proceedings it is generally sufficient to present a private opinion.

As to the legitimate interest, it exists when lack of the PI may render impossible or seriously hinder enforcement of a final decision in a case or otherwise render impossible or seriously hinder achieving the aim of the proceedings.

Preliminary injunction is typically granted in camera and ex parte – on the basis of the PI request only. The defendant usually does not participate in these proceedings until the PI is served on him or her – either by the court or the court enforcement officer (if a seizure of the products is ordered in addition to the injunctive measure). Neither is the obliged party notified about the filing of the PI request – however, if he or she learns about such a request from any source he or she may file a brief containing their arguments.

In general, filing the brief in due time may influence the outcome of the PI proceedings. Presenting well-founded and comprehensible counter-argumentation raises doubts as to whether the PI request is corroborated and may even lead to scheduling an open hearing. In the case of serious doubts, the court is likely to dismiss the PI request.

Another means of balancing the positions of the parties of PI proceedings is a security bond, the amount of which should correspond to the value of potential damage which may be suffered by the defendant due to the enforcement of the PI. Should the court demand such a security bond, the enforcement of the PI is conditional upon the payment of the deposit by the applicant to the court’s bank account.  


Where the PI is granted and enforced but in final resolution of the case the claims are dismissed due to any reason (including dismissal on formal grounds), the defendant may seek compensation of damage suffered due to the enforcement of the PI. The case has to be brought within one year after the infringement case was dismissed in a final and legally binding decision. It requires institution of a separate civil case. 


According to the Polish Industrial Property Law, the limitation period for claims for infringement of industrial property rights shall be three years. The period shall run, separately in respect of each individual infringement, from the date when the right-holder has learned about the infringement and about the infringing person. However, in any case, the claim shall become time-barred after five years from the date when the infringement occurred. 

The limitation period may, in rare statutory events, be suspended.

The limitation in Poland is a form of a defence and is not assessed ex officio. As the preliminary injunction proceedings are usually ex parte, the time-barred claims can be secured with a PI and the defendant must raise and subsequently sufficiently corroborate the limitation of claims.

Pursuant to Article 2861 of the  Polish Industrial Property Law, the patent-holder may file a request for preservation of evidence (this institution has been introduced to the Polish patent law on the basis of so-called Enforcement Directive – 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights). The request may also be filed prior to institution of the civil proceedings. The preservation will be allowed when there is a risk that producing the evidence in the infringement case becomes impossible, or too difficult, or that for other reasons it is necessary to determine the existing state of things. The request is recognised by the court after conducting a hearing.

According to Article 2861 of the Polish Industrial Property Law, the patent-holder may file for a preliminary injunction by obliging the alleged infringer to provide information concerning the infringement; this institution also results from incorporation of so-called Enforcement Directive. The preliminary injunction containing the request for information differs from the regular PI described above. Two differences of major importance are (i) the requirement that the request for information shows a high probability of patent infringement, and (ii) that the motion is recognised by the court after an open hearing. 

The applicant may request exclusively the following information:

  • companies (names) and addresses of the manufacturers, distributors, suppliers and other previous holders of the goods or services that infringe the patent, as well as the envisaged wholesalers or retailers of these goods or services; 

  • quantities of produced, manufactured, sold, received or ordered goods or services which infringe the patent, as well as the price paid for the goods or service.

Furthermore, the Polish Code of Civil Procedure allows the party of the prospective proceedings to file a motion for preserving evidence before the institution of these proceedings. The main prerequisite for preserving evidence is the concern that the taking of evidence in the main proceedings becomes impossible or too difficult, or that for other reasons it is necessary to determine the existing state of things (for example, when there is a risk of destroying the evidence). These proceedings may be instituted prior to filing an infringement action.

There are no special provisions governing the lawsuits in intellectual property proceedings that differ from general civil proceedings.

Polish law provides for relatively strict requirements for filing new arguments and evidence.

Each party is allowed to file one brief (statement of claim/statement of defence) which should, in principle, contain all arguments and evidence (including requests to produce evidence which is not available to that party – eg, documents belonging to a third party). Additional pleadings with complementary arguments (apart from statement of claims and response to the statement) may only be submitted upon the court’s explicit permission. Any new evidence is allowed only when it would not be reasonably necessary to request in the statement for claim/statement of defence or if it will not delay the proceedings.

Each party is entitled to file written evidence, such as private or official documents, as well as to request oral examination of witnesses. As the Polish courts are not experienced in patent cases and are never composed of technical judges, typically it is recommended to submit a private expert opinion.

For a case which requires technical knowledge – which is most of the patent cases, in fact – a court-appointed expert opinion should also be produced.

Representative or collective actions for intellectual property rights proceedings are not permitted by the Polish legal system.

According to Article 68 of the Polish Industrial Property Law the patentee or the licensee should not abuse his or her patent, in particular by preventing the third party from exploiting the invention, if such exploitation is necessary to satisfy the needs of the domestic market, in particular when the public interest requires it, and the product is not available to the public in insufficient quantity or quality, or is available at excessively high prices. However, the prevention of the exploitation of the invention by third parties within a period of three years from the date of grant of the patent is not considered to be an abuse of the patent.

There have been no anti-competition (public law) cases which would concern the abuse of patents in Poland so far.

An action for infringement is conducted between the owner of the intellectual property right and the defendant (ie, the alleged infringer). Claims relating to an infringement may be pursued in conjunction with claims stemming from other legal grounds, such as an act of unfair competition, if the owner conducts its business activities concerning the infringed right on the territory of Poland and is a competitor of the alleged infringer.

A third party may file an action for infringement only if it is entitled to an exclusive licence disclosed in the patent register maintained by the Polish Patent Office and provided that the licence agreement does not exclude that. In such case, the exclusive licensee must prove his or her standing to sue by filing an excerpt from the register, and it is not obligatory to disclose the exclusive licence agreement in the infringement proceedings.

Certain limitations for actions filed by the exclusive licensee may be considered in relation to the monetary claims as regards the relevant damage incurred as a result of the infringing acts. Specifically, the licensee should have a standing to sue only for damages which he or she incurred and not the entire damage occurred due to the infringement.

Presently, Polish law does not contain provisions which would expressly address the issue of indirect infringement. Therefore, this concept can only be inferred from general principles of civil and intellectual property law. A provision of law, which is commonly taken into account in similar cases, is Article 422 of the Polish Civil Code pertaining to the tortuous liability. Article 422 CC regulates the liability of three categories of persons – accessories, instigators and persons – who knowingly took advantage of the damage caused to the injured entity. An accessory is a person who assists in the commission of an infringement by supporting the principal infringer either psychologically or materially (eg, by providing the principal infringer with the devices necessary for the commission of the infringement).

Polish legal literature almost uniformly supports the view that an actual direct patent infringement must occur, in order to consider an indirect patent infringement.

In lack of the established case law, the legal writing commonly accepts that the liability of an accessory is not purely objective and it is dependent on the culpable conduct. Differing views are expressed as to whether the negligence of an accessory in not realising that he or she is contributing to a patent infringement is sufficient or whether an intent on the part of an accessory is required.

The liability of an instigator and a person, who knowingly took advantage of the damage caused to the injured entity is, in essence, dependent upon the culpable conduct, which also encompasses gross negligence.

The possibility of employing Article 422 CC as a legal basis of the indirect infringement of intellectual property rights is the subject of differing views. Moreover, there are differing views as to the scope of claims available against the indirect infringer as Article 422 CC expressly provides only for the claim for damages. The majority of views, as well as the Supreme Court in the ruling in case II CR 161/74, accept a broad interpretation of the application of this provision in patent infringement cases and allow all claims available against the direct infringer and also against the perpetrator of the indirect infringement. Even so, a cautious approach is recommended.

Presently, there is a pending amendment to the Polish Industrial Property Law which may add an explicit provision stipulating protection against an indirect infringement. Pursuant to the planned wording of Article 661, a patent-owner may prohibit a third party who does not have his or her consent to supply or offer to supply a person which is not authorised to use the invention protected by a patent, with means relating to the essential element of this invention, enabling its use, if the third party knows or should have known that such means are suitable and intended for use with this invention. This provision does not apply when the means are standard commercial products, except in cases where a third party induces a supplied person to take acts described above.

It is expected that the amendment may enter into force within weeks or months.

The extent of protection conferred by the national patent is determined by the terms of the claims. Polish courts tend to apply a strict meaning to the patent claims. One of the major differences between the EPC (European Patent Convention) and the Polish law is that the latter does not require that the description and the drawings be used to construe the claims. The description and the drawings may be used to interpret the claims when necessary. In accordance with the clara non sunt interpretanda principle, Polish courts, especially in the preliminary injunction proceedings, often do not refer to the description or the drawings if the claims are prima facie clear and unambiguous.

In the main action, claims are construed almost always with the assistance of a court-appointed expert. As a first step, the meaning of the words contained in the claim is determined on the basis of the patent description (the patent is its own dictionary). Then, based on the court-appointed expert opinion, the court ascribes the usual meaning of such terms in the relevant area of technology. The claim construction should not lead to broadening the extent of the protection which follows from the terms of the claim.

The prosecution files are not used for construing the claims, although there is no such explicit prohibition.

The major factor which determines the scope of protection and the exclusive use is the format of claims.

Polish courts accept that in certain instances the patent protection may extend beyond the literal meaning of the claims. The infringement under the doctrine of equivalents may be considered only if it is obvious for a person skilled in the art that a given measure may be applied in the invention instead of its protected feature in order to achieve the same objective, meet the same technical function and lead to achieving the same result.

Furthermore, the application of the doctrine of equivalents has been also confirmed in the recent judgment of the Supreme Court dated 10 December 2015 (which is also the first Polish Supreme Court judgment relating explicitly to the doctrine of equivalents). The court has indicated that the compared features must be considered in the context of the gist of the invention and the essential features incorporating the gist of invention.

Pursuant to the provisions of the Polish Industrial Property Law, the following is not considered an act of infringement of a patent:

  • exploiting an invention concerning means of transport and their parts or accessories temporarily located in Poland, as well as objects in transit;
  • exploiting an invention for national purposes, in particular for security or public order;
  • applying an invention for research or experimental purposes, evaluation thereof, analysis or teaching;
  • broad Bolar exemption – exploiting an invention for the purpose of obtaining marketing authorisation for pharmaceutical product or other authorisation (for instance for biocidal product), to a necessary extent;
  • producing a medicine in a pharmacy under an individual prescription.

Polish law recognises the doctrine of exhaustion. Patent exhaustion extends to products which were previously put on the market in the territory of Poland or another EEA country upon the patent-holder’s consent. The term "putting on the market" is construed narrowly in comparison with the identical term that refers to the form of infringement and it is accepted that it does not encompass lending, rent or lease.

A patent is not infringed by a prior user – ie, a person who exploited an invention in good faith in Poland at the priority date. Such a person may still use the invention free of charge within his or her undertaking to the extent he or she has previously used the invention. This right is also granted to those persons who, at the same date, had made substantial preparations to use the invention.

If the patent is found to be abused, the Patent Office may grant a compulsory licence.

The claims for patent infringement may be effectively pursued before the lapse of the limitation period which has been discussed above.

The role played by experts in Polish jurisdiction is decisive for recognition of a case in patent/SPC matters. Pursuant to the provisions of the code of civil proceedings, it is obligatory to admit the evidence of the court-appointed expert opinion if determination of certain matters requires special knowledge. A notion of "special knowledge" usually embraces technical matters, but a court-appointed expert opinion may be admitted also for determination of licence fees, damages, calculation of unlawfully obtained profits in accordance with accounting records, etc.

Experts are appointed by the court from the official list of court expert witnesses or ad hoc. In the case of rare technical fields like bioinformatics, cytogenetics, etc, the parties usually present the lists of proposed experts to the court and the court chooses from that list. Any present or past co-operation of an expert with either party could serve as a reason for the court not to appoint that expert or disregard his or her opinion.

In complex cases any party may request that an institution be appointed as expert (eg, technical university, medical university, etc).

A court-appointed expert prepares an opinion on the basis of the case files. Due to that, it is a usual practice to submit to the opinions of such private experts (usually renowned specialists in a given field of art) which support the party’s position. It is assumed that a court-appointed expert, before digging through the pile of case files (typically containing hundreds or thousands of pages), would read private experts’ opinion and share the most convincing one.

Evidence of a court-appointed expert opinion is usually not admitted in the PI proceedings. It is generally sufficient to present an opinion of a private expert. In isolated cases the courts decide that the complexity of the case requires hearing the court-appointed expert's opinion and dismiss PI requests. Such a view used to be quite popular several years ago and still is often invoked by defendants in their protective briefs or appeals against PI decisions, although recently unsuccessfully.

A private expert opinion/court-appointed expert opinion should be limited to technical aspects of the infringement and should not contain any legal conclusions, in particular on the infringement. The notion of "infringement" constitutes a legal term so it is for a court to decide whether an infringement occurred or not. Due to that, questions to the experts are usually formulated in such a manner as to obtain a technical opinion whether an infringing product contains features indicated in a patent claim or was obtained in a process specified in a patent claim, while not directly asking whether a product "infringes" a patent.

There is no separate procedure for construing the terms of the patent’s claims.

A patent may be revoked only in the proceedings before the Polish Patent Office. The Polish Industrial Property Law allows for opposition and revocation proceedings, but it does not distinguish them in terms of substantive prerequisites. The only difference rests with the specific requirements for the standing to request the revocation (ie, the applicant must prove a legitimate interest in revocation).

Revocation Proceedings

A patent may be revoked in whole or in part at the request of any person having a legitimate interest therein who is able to prove that the statutory requirements for the grant of a patent have not been satisfied. In order to demonstrate the legitimate interest the applicant must prove that the patent in question prohibits him or her from introducing own products on the market. According to Polish case law a legitimate interest is required to be direct, concrete, current, and to be corroborated by actual circumstances. The petitioner can argue that he or she manufactures and/or markets products which are covered by the disputed patent (or intends to do so), but this assertion should be supported by relevant facts and evidence. A patent can be revoked when the statutory requirements for the grant of a patent have not been satisfied. Therefore, the lack of novelty, inventive step, industrial applicability, insufficient disclosure or added subject-matter can be invoked.

Opposition Against the Decision on Grant of the Patent

This remedy may be filed by any person (actio popularis) within the period of six months after the decision on grant of the patent is published. An opponent must prove that the statutory requirements for the grant of a patent have not been satisfied – the same substantive requirements as in the case of revocation action.

The Polish Industrial Property Law provides that a patent may be revoked in its entirety or in part. In practice, however, cases of partial patent revocation are extremely rare.

The Patent Office is not bound by the extent of revocation request by the applicant. In other words, even if the applicant requests that the patent is revoked in its entirety, and such a request is not entirely supported in the course of the proceedings, the Patent Office should not merely follow that request but rather revoke the patent in part, introducing necessary changes into wording of its claims (and potentially also in the patent specification). The judgment of the Supreme Administrative Court, dated 12 March 2008, II GSK 411/07 confirmed that the Patent Office should consider revoking a patent in part by introducing further technical features into the patent claims defining protected subject-matter, but failed to provide details on the procedural aspects of such partial invalidation. There are dissenting views both in the legal writing and in jurisprudence on the applicability of the partial revocation and the manner in which it should be implemented (eg, to what extent the Patent Office may amend the claims).

Polish patent literature (supported with some case law) provides the following possibilities of amending or supplementing the patent specification, which may be theoretically considered with regard to partial patent revocation:

  • limitation of the range of parameters;
  • introduction of a change in a feature by replacing its general description with more a detailed one (provided that this detailed description may be found anywhere in the application);
  • introducing features disclosed in dependent claims into independent claims;
  • adding auxiliary features disclosed in specification or drawings;
  • moving features of characterising part to pre-characterising portion of patent claim.

However, it must be emphasised that no binding practice has been established so far and it is very difficult to introduce any post-grant amendments in general, and specifically in the revocation proceedings.

In revocation proceedings, amendment may be considered only in relation to partial patent revocation (ie, if the Patent Office considers the patent to be valid in part). Maintaining a patent in part must be reflected in patent claims as those define the scope of protection for the patented invention. Due to that, potentially the rules applied in prosecution proceedings could be employed for that purpose. The application of such rules is justified by the same matter to which the regulations pertain (ie, both clarification of an application during prosecution procedures and its limitation as a result of partial patent invalidation come down to aligning patent claims to the extent to which the invention is patentable).

Potential post-grant amendments resulting from the revocation proceedings should be dependent on the outcome of the assessment concerning re-examined patentability of a given patent. A patent-holder’s proposals for amendment of patent claims – potentially including also relevant changes in patent specification – are not binding for the Patent Office.

However, the above considerations are of a theoretical nature as so far both the Patent Office and administrative courts have been reluctant to allow patent limitation in the revocation proceedings.

Apart from the above, the right to amend the patent post-grant relates only to correction of obvious errors or clerical mistakes.

Poland has a bifurcated system with revocation and infringement actions examined separately. The former is subject to the exclusive competence of the Patent Office and the latter may be recognised and decided only by the common civil courts (commercial divisions of the regional courts).

According to the prevailing case law, common courts are bound by the decision on the grant of the patent and shall presume its validity. The patent is presumed valid for as long as the decision on its grant remains valid (ie, until the final resolution of the revocation proceedings). The patent should be considered valid by the civil courts recognising the infringement cases also while the revocation proceedings are pending.

The proceedings for revocation of a patent may take one to two years for the Patent Office’s decision plus approximately three to four years to exhaust the appeal routes; typically, it takes one to one and a half years in the Voivodship Administrative Court and two to two and a half years in the Supreme Administrative Court. Hence, it takes four to six years in total until the revocation proceedings are finally resolved in the most straightforward scenarios – ie, until the patent is revoked by the Patent Office and this decision is confirmed by both court instances or the invalidation action is dismissed and this is confirmed by both court instances. The proceedings may last much longer if, for example, a decision of the Patent Office is reversed and remanded for re-examination, as this adds at least one to one and a half years to the overall timing.

The infringement cases usually take two to three years in first instance court and one and a half to two years in second instance court. In the majority of cases, the judgment of the second instance court may be further appealed by an extraordinary measure (cassation appeal) to the Supreme Court which needs another one to one and a half years to recognise the case.

Considering the above, the timing of decisions in revocation and infringement cases is similar, but revocation proceedings are much more prone to delays.

There are no special procedural provisions for intellectual property rights proceedings in infringement cases.

There are no technical judges in Poland. A majority of patent cases require a court-appointed expert opinion to explain technical aspects of the alleged infringement.

The panel is composed of one professional judge (lawyer) in the first instance and three professional judges (lawyers) in the appeal and the Supreme Court.

The parties have no influence on choosing the judge who will handle the case. The plaintiff may only – to a certain extent – choose between courts in different districts; it is known that some courts are more experienced in patent litigation while other have handled very few cases.

Polish courts are very eager to accept all types of amicable resolutions of patent cases. Due to their complexity, such cases are more often settled between the parties rather than in any formalised proceedings, although Polish law provides for different types of conciliation measures, such as court mediation prior to and during the infringement proceedings, and court conciliation proceedings available prior to infringement proceedings.

There are no mandatory settlement procedures that would be required prior to instituting a lawsuit. However, the plaintiff must inform the court in the statement of claim on measures taken to resolve the case amicably; if none have been taken and the defendant acknowledges the claims, the plaintiff shall bear all costs of proceedings.

Until recently, pending revocation proceedings could only influence the infringement case in a very limited scope – eg, in the event of an obvious lack of novelty the chances of obtaining a preliminary injunction were rather low.

In the recent past, revocation proceeding was not sufficient even to stay the infringement case. The situation tends to evolve in the light of the Supreme Court’s judgment dated 18 February 2016, case II CSK 282/15. The Supreme Court recommended to stay the infringement proceeding pending revocation case which concerned an industrial design (which benefits in Poland from a formal assessment of restorability only), but the defendants in patent cases started invoking this judgment to support requests for stay of infringement action until the revocation action is finally resolved.

The remedies available for the patentee under the Polish industrial property law are as follows:

  • cessation of the infringement;
  • surrender of unlawfully obtained profits;
  • redress for damages (in the case of wilful patent infringement):
    1. in accordance with the general principles of the Polish Civil Code, or
    2. by the payment of a sum of money in the amount corresponding to the licence fee, or other reasonable compensation, which would have been due on account of a consent given by the patent-holder to exploit his or her invention;
  • publication of the court judgment (in full or in part);
  • the disposal of unlawfully manufactured or marketed goods owned by the infringing party (in particular withdrawal or destruction of these goods).

The notion of wilful infringement encompasses intentional infringement and gross negligence.

Monetary claims are rarely awarded in practice because they require complex evidence, are rather expensive and are time-consuming.

If the plaintiff proves the infringement, as well as other necessary circumstances, depending on the kind of the enforced claims, the discretion of the court in ordering remedies is rather limited. The only discretionary decision which is worth mentioning is regulated in detail in the Polish Industrial Property Law – namely, the court may dismiss the claim for cessation of infringement and award a monetary compensation instead: if the defendant acted non-wilfully, the prohibition would be excessively severe for the defendant and the monetary compensation sufficiently meets the interests of the patentee.

If the patentee is a successful party in the proceedings, it may also request a reimbursement of the legal costs (including court fees and attorney fees, within the statutory limits, as described in 6.2 Rights of Prevailing Defendants, below).

The prevailing defendant may request a reimbursement of legal costs, which consist of court costs (including court fees – on appeal or cassation appeal, costs of court-appointed experts’ opinions) and attorney fees. The amount of attorney fees is limited by the official scale of charges, which are very low, and partially depend on the value of claims. The court decides on the amount of reimbursed attorney fees taking into account the complexity and value of the case, although the total amount cannot exceed six times the official charges. It translates to the reimbursement of up to EUR2,500 if no monetary claims were pursued and up to EUR37,500 where monetary claims exceeding PLN5 million were pursued.

There are no different types of remedies in relation to specific types of patent or to different technical intellectual property rights (inventions, utility models, industrial designs and topographies of integrated circuits). The applicable remedies remain the same for the above-mentioned rights (see 6.1 Remedies for the Patentee above).

PI is usually requested and granted before the infringement proceedings are instituted. There are no obstacles against requesting temporary measures during the appeal, although doubts regarding the legitimate interest in obtaining the PI at such a late stage may arise.

There are no special provisions concerning the appellate procedure for intellectual property rights proceedings. The general provisions of the Polish civil procedure law apply to the proceedings before the courts of appeal in IP cases.

The purpose of appeal proceedings in Poland is to re-examine the case within the limits of the appeal. The court of appeal (the court of the second instance) considers the cases on the basis of the evidence collected both in the first instance proceedings and in the appeal proceedings. The court of appeal considers all substantive and procedural issues which are challenged by the appellant in the appeal and may not, at its own initiative, consider other issues. Only the nullity of the proceedings is examined ex officio. Therefore, it should be stated that the appeal proceedings imply a full legal and factual review of the case.

Pre-litigation costs comprise legal fees, which depend on the agreement between the client and the attorney. If court settlement proceedings are initiated (mediation, conciliation) additional court fees have to be added (up to several hundred euros).

Court fees and expenses have to be paid initially by the party which requests a given action (ie, files the statement of claim, appeal, asks for a court-appointed expert opinion). All costs are split between the parties in the proportion in which each of them prevailed (eg, if one party won the case in full or in majority then all costs of that party should be reimbursed). The costs are split proportionally based on the value of claims awarded/dismissed which is established by the plaintiff in the statement of claim but may be verified by the court.

The prevailing party may request a reimbursement of legal fees, also proportionally to the value of the claims on which this party had won the case. As mentioned in 6.2 Rights of Prevailing Defendants above, the amount of attorney fees is limited by the official scale of charges, which are very low, and partially depends on the value of claims. The court decides on the amount of reimbursed attorney fees taking into account the complexity and value of the case, although the total amount cannot exceed six times the official charges. It translates to the reimbursement of up to EUR2,500 if no monetary claims were pursued and up to EUR37,500 where monetary claims exceeding PLN5 million were pursued.

Alternative dispute resolution is an uncommon way of settling patent cases. Theoretically, arbitration would apply to patent cases although it requires an arbitration agreement/clause which is unlikely in the case of patent disputes. Another reason why arbitration has not become popular is the important role of preliminary injunctions in patent cases in Poland and the fact that temporary measures can only be awarded by common courts.

Obviously, a patent belongs to a broader category of economic rights and is governed by the same principles of general succession and transfer of rights.

Assigning a patent requires an agreement which must be executed in writing, otherwise it is null and void.

When the agreement on assignment is concluded, the patent is transferred to the assignee. The change of ownership must be then reported to the Patent Office. The recordal of change is subject to an official fee of EUR17. Subsequently, the Patent Office issues a decision and enters the change into the public register.

Licensing a patent requires an agreement which must be executed in writing, otherwise it is null and void.

The licence shall expire at the expiry of the patent at the latest.

Sublicensing is rather restricted in Poland, it is only allowed when the patentee has explicitly consented to sublicensing; no sub-sublicense is permitted ex lege.

Except for the restriction concerning the written form of an agreement, there are no particular requirements for licensing a patent.

All types of licence may be – upon the request of either party – disclosed in the patent register.

LDS Łazewski Depo & Partners

Prosta 70
00-838 Warsaw
Poland

+48 22 832 2515

+48 22 832 2517

office@lds-ip.pl www.lds-ip.pl
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Law and Practice

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LDS Łazewski Depo & Partners brings together lawyers (advocates and legal advisers), patent attorneys, European patent attorneys and European Community trade mark and design agents to deliver the best service to their clients. As well as monitoring Polish and European case law and legislative developments, the firm is always on the lookout for “make-law” cases and cases on the cutting edge of Polish and European IP – cases where from the outset there is potential for a preliminary reference to the European Court of Justice or the Enlarged Board of the Supreme Court of Poland. This vigilance has led to LDS partners and associates being involved in numerous landmark cases that have given rise to a new understanding of the law or introduced from other jurisdictions legal concepts hitherto unknown in Poland. In terms of patent practice, the firm possesses particular knowledge and experience in pharma patent enforcement and defence, process-driven matters (European Patent validations), and obtaining Supplementary Protection Certificates.

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