Patent Litigation 2020

Last Updated February 10, 2020

Poland

Law and Practice

Authors



Traple Konarski Podrecki & Partners is one of the leading law firms on the Polish market. The firm's key practice areas are: industrial property law; strategic consulting and management of industrial property rights; applications and proceedings before the Patent Office and EUIPO protection against infringement and unfair competition; internet domain names; and audits and contracts. The firm also conducts training and workshops in the field of industrial property law, brand protection, and issues relating to unfair competition; the training sessions often concern new regulations, where interpretation and identification of the possible types of legal risk is particularly problematic, while being essential for the functioning of the company. The firm's intellectual property team comprises more than 20 lawyers and has been active on the market for over two decades.

The Polish legal system, through the Act on Polish Industrial Property dated 30 June 2000 (IPL) protects inventions through patents and utility models. For obvious reasons there is no legal definition of an invention, the IPL, however, lists the conditions which have to be fulfilled in order to obtain a patent. A "patent" is defined by the IPL as relating only to inventions possessing certain characteristics, such as: (i) novelty; (ii) an inventive step; and (iii) industrial application, no matter the specific field of technology within which they have been developed.

The IPL defines a "utility model" as a novel and useful technical solution that relates to a certain shape, construction, or juxtaposition of the object presented in a stable form. Unlike patentable inventions – which might appear in various forms, including both material objects and methods – a utility model can be protected by granting an exclusive right only on the condition that it is a tangible object. The latest amendment to the IPL, which will take effect from the beginning of 2020, enlarged the scope of the utility model. Not only could the construction of an object be considered as a utility model, but also an object consisting of functionally connected parts. The IPL does not require a utility model to have an inventive step, which is considered as a major facilitation factor.

Poland has also introduced special protection of biotechnological inventions in accordance with the provisions of Directive 98/44/EC. Therefore, similarly to other European countries, the IPL implements autonomous rules governing inventions consisting of biological material. This type of exclusive right is called "a patent for a biological invention" (patent na wynalazek biotechnologiczy). Apart from the special provisions derived from the Directive itself, all general rules governing standard patent granting procedure, as well as infringement proceedings and right holders’ legal status, fully apply to this specific type of invention.

Depending on the business plans and needs of the applicant, there are three major types of procedure to be considered:

  • a national procedure (Polish) before the Polish Patent Office (PPO), which ends in the granting of a patent or a right of protection for a utility model on the territory of Poland;
  • a procedure before the European Patent Office, which aims at obtaining a European Patent – in order to benefit from actual protection one then has to validate the European Patent in each country, where protection is desired, that is a member of the European Patent Convention (there are 38 member states of the European Patent Convention); and
  • an international procedure before WIPO based on the Patent Cooperation Treaty (PCT) – the applicant chooses from a selection of countries which are signatories of the PCT (there are 153 members of the PCT).

The grant procedure lasts from three to six years depending of the complexity of the invention and possible reservations of the Polish Patent Office regarding the patent application. There is an 18-month period of secrecy – the patent application is published and available to the public after this time. The timeline for utility models is much shorter, as little as two years.

The applicant does not need to act through a professional legal representative – he or she is entitled to act in his or her own capacity. The only condition is possessing full legal capacity (as defined in relevant legal provisions), which in general allows a person to independently undertake any formal act before any Polish administrative and judicial bodies. There is one exception relating to subjects who do not have a permanent residence in Poland – these entities are obliged to act through a professional representative.

However, if an applicant does decide to act through a professional representative he or she may only choose a patent attorney (rzecznik patentowy) who is a member of Polish Chamber of Patent Attorneys and specialised in IP issues.

The official costs are listed in the Regulation of the Council of Ministers 08/09/2016 (the Regulation). The cost of the application – both a patent application and one for a right to a utility model – is PLN550.

The term of a patent is 20 years from the formal dating of the application. This also applies to patents for biotechnological inventions. The term of a right to a utility model is 10 years from the date the application is filled.

The protection must be renewed each year.

A patent provides the patent holder with the exclusive right to the protected invention. This exclusive right authorises the owner to prevent any third parties – not possessing his or her authorisation or consent – from using the invention in a way listed in Article 66 of the IPL. According to this provision, the owner may prevent any third party from using the invention commercially or professionally, such as:

  • producing, using, offering, placing on the market, or importing a product subject to the protected invention; or
  • using any method that is subject to the invention (and therefore protected by the exclusive right), as well as producing, using, offering, placing on the market, or importing any product that is the result of employing the protected method.

If any third party infringes the patent, the owner may undertake various legal actions. Mostly these are taken before civil courts, which means that the proceedings are regulated by the Polish Civil Procedure Code. Claims available to the owner include:

  • injunction – the court can command the infringer to cease performing any actions that threaten or infringe the owner’s exclusive right;
  • recovery of any unlawfully obtained benefits – the court can command the infringer to hand over any benefits that he or she has obtained by infringing the patent; and
  • damages – the owner has a right to demand damages only in cases of culpable infringement (he or she may choose between damages calculated on the regular basis in accordance with the relevant provisions of the Civil Code, or compensation equal to the royalties or other type of renumeration that would be due if the relevant contract had been signed by both parties.

The primary obligation of the patent holder is the timely payment of renewal fees. The fees are calculated separately for each protection period and their amounts differ throughout the 20-year term of the exclusive right. The first period consists of the first three years, each following period is one year long.

In principle, the same rules apply to the owner of the right to a utility model. It must be stated that the renewal fees are different and that they are listed separately in the Regulation.

Being a member of the EU, Poland has introduced special provisions related to additional protection in the form of a Supplementary Protection Certificate (SPC; in Poland known as a dodatkowe prawo ochronne). All substantial legal provisions concerning the SPC – ie its scope or the circumstances under which it might be obtained – are regulated at the European level. Polish law has implemented procedural rules regarding the filing of an application for an SPC as well as the grant procedure itself and the legal consequences of an SPC’s termination.

The subject matter of the SPC has been limited, on the territory of the European Union, to two areas of technology only: medical products (Regulation 469/2009) and plant protection products (Regulation No 1610/96).

An SPC can be obtained for any medical product, or a plant protection product, that has been previously – ie, before it was introduced on the market – successfully granted an official authorisation, issued by specific administrative bodies in a domestic procedure. This authorisation is treated as a prerequisite for the product to be offered for sale on the territory of Poland.

An SPC protects the invention automatically after the patent protection expires and is granted for a maximum period of five years. A period which, in practice, differs between cases.

Once the patent application is published any third party can submit observations regarding the patent or utility model application, mainly in order to prevent the Polish Patent Office from granting the protection. The person/entity which submits the observation does not become the party of the procedure. The Polish Patent Office hands the observations over to the applicant allowing him or her to take a stand. The right to file observations is limited in time to the date when the final decision on successfully granting the patent is issued.

The first step in case of a refusal to grant a patent will be a motion for reconsideration which could be filled within two months after the application is denied. This motion, along with the patent application, will be handled by different expert from the Polish Patent Office. If this doesn’t work the applicant may file an appeal to the Administrative Court and afterwards to the Supreme Administrative Court. Administrative Courts examine whether the Polish Patent Office made any procedural or substantial errors.

A failure to pay the annual fees has different consequences depending which fees are concerned. There is a special regime for so called “first fees” – ie, the fees dues immediately after the positive decision on the PPO granting the patent. If the applicant fails to pay the fee indicated in the PPO decision, the decision to grant the patent is revoked. The remedy for this is to file a motion for reconsideration proving that the non-observance has been without fault on the applicant's part and to pay, at the same time, the overdue fee.

For the following years of protection, the patent owner must pay renewal fees upfront on the last day of the previous period at the latest (basic term). If a patent holder fails to cover the required fees, he or she may still pay the amount due within six months from the day the last fully-paid protection period ended (extended term, similar to a typical grace period). In the latter case, a patent holder is obliged to pay an additional amount of 30% of the fees due for the period in question. Therefore, he or she will pay 130% of the standard fee. That is the only remedial procedure available. It is not possible to file a request to reinstate the statutory deadline, which applies to both the basic and extended deadlines since the extension is already treated as an equivalent to such a reinstatement procedure.

The most common action against infringement is a civil action before the courts, which is started by bringing the lawsuit or injunction motion. Before court proceedings, a cease and desist letter is often used as a tool to solve the conflict out of court. The primary available actions are set out below.

Cease and Desist Letter

As a preliminary action which usually precedes any official court action. This action also serves as a starting point for negotiations between the infringer and the owner of the IP right in which an amicable out-of-court settlement may be reached.

Interim/Preliminary Injunction

The main aim of this action is to stop the infringing activity for the duration of the court proceedings – ie, until a final judgment is given by the court. An application for a preliminary injunction may be filed separately, prior to suing the infringer, or simultaneously with a lawsuit. Alternatively, it may be filed at any time during civil court proceedings.

Lawsuit Before a Civil Court

This is filed before a regional court (sąd okręgowy) and should contain a clearly defined demand and an explanation of the facts of the case substantiating that demand.

Mediation

This is a voluntary procedure based on a mediation agreement between the parties or on a court order. In a mediation agreement, the parties define the subject matter of the mediation and either appoint a mediator or specify the method to be used for the appointment of one. Generally, mediation is held prior to the main proceedings; however, if agreed by both parties or ordered by the court, it may also take place after the proceedings have commenced.

Conciliation Proceedings

Before a lawsuit is brought, either party may invite the other party to conciliation proceedings. Such proceedings are conducted before a judge, who, provided that the parties have reached a settlement compliant with law and public policy, makes the settlement legally binding.

Arbitration Proceedings

In cases where out-of-court settlement is permitted, the parties may decide to settle the matter before an arbitration court. Arbitration requires a written agreement between the parties in which they define the subject of the dispute. The agreement may also specify the method of selecting an arbitrator; otherwise, an arbitrator is designated in the manner set out in the Civil Procedure Code.

In order to eliminate an IP right, it is possible to file an application for a declaration of invalidity in the Polish Patent Office. A patent may be invalidated in its entirety or in part. It may be invalidated on the grounds that it does not meet the requirements described in the IPL – eg, if it lacks novelty, an inventive step, and/or industrial applicability. A patent may also be invalidated if it fails to describe the invention clearly and comprehensively enough for an expert to execute it or if it was granted for an invention different from the one defined in the patent application.

An application for a declaration of invalidity may also be filed if the patent application was submitted by a person not entitled to be granted that patent. First, this fact should be confirmed by a judgment made by a court stating that the patent applicant was not entitled to obtain the patent. Once such a ruling has been issued, the rightful holder may request, before the Patent Office, that the patent be invalidated.

Invalidation proceedings, inter partes in nature, are brought before the Polish Patent Office. A patent is declared invalid ex tunc – ie, from the date on which it was granted. This means that the patent is treated as though it had never been granted.

In certain cases specified in the IPL, a compulsory licence of a patent may be granted. The Polish Patent Office may allow persons other than the patent holder to commercially use the patent:

  • if it is necessary to prevent or eliminate a threat to national security, in particular in the areas of defence, public order, protection of human life and health, and protection of the natural environment; or
  • if it is found that the patent was abused as defined by Article 68 of the IP Act.

According to Article 68 of the IP Act, a patent holder or a licensee may not abuse his or her rights, in particular by preventing third parties from using the invention if that use is necessary for the purpose of satisfying the needs of the domestic market, especially if the public interest so requires and the product is not available to the public in sufficient quantity, adequate quality or at affordable prices.

If it is found that the holder of a patent granted earlier (the earlier patent) prevents, by refusing to conclude a licence agreement, the meeting of the needs of the domestic market through the use of a patented invention (the dependent patent) whose exploitation would infringe the earlier patent, then the Polish Patent Office may allow persons other than the earlier patent holder to commercially use the earlier patent. The holder of the earlier patent may also request authorisation to use the invention which is the subject matter of the dependent patent (a cross licence).

A compulsory licence may be granted to an applicant who demonstrates that he or she has already tried, in good faith, to obtain a licence. This condition may be waived if a compulsory licence is to be granted in order to prevent or eliminate a threat to national security or if the Patent Office has made an announcement that a compulsory licence may be applied for.

The courts with jurisdiction over IP matters are regional courts (first instance) and appellate courts (second instance). There is no third instance but the case may be the subject of proceedings before the Supreme Court, which will be in this case the court of cassation.

For the purpose of resolving domain name disputes, the Arbitration Court for Domain Names was created by the Polish Chamber of Information Technology and Telecommunications.

Cases concerning EU trade marks and designs are heard by the XXII Division of the Regional Court in Warsaw, which is the only specialised court for IP matters in Poland.

According to the Civil Procedure Code, a lawsuit should contain information on efforts made by the parties to settle the dispute out of court or explain why such efforts were not undertaken. However, the plaintiff is not obliged to seek an out-of-court resolution of the dispute before bringing the lawsuit.

In general, each party, providing it is not a foreign entity, can act on its own behalf both before the Polish Patent Office and courts of general jurisdiction. Foreign parties have to act through a Polish representative.

A patent applicant needs to be represented by a patent attorney in the application procedure before the Patent Office. However, there is no such restriction on proceedings before a court. Therefore, parties may be represented by lawyers, including lawyers other than patent attorneys, or act on their own behalf.

Interim injunctions are available and may be requested in proceedings before a court. The main aim of such proceedings is to stop the infringing activity for the duration of the court proceedings – ie, until a final judgment is given by the court.

An interim injunction is granted if the infringement is proved prima facie, and there exists a legitimate interest in issuing the injunction.

Substantiation of the claims need not be as comprehensive as is normally required due to the simplified nature of preliminary injunction proceedings. Thus, prima-facie evidence may constitute sufficient grounds for the application as long as it substantiates the claims properly.

The requirement of a legitimate interest in being granted a preliminary injunction is met if the lack of an injunction may render impossible, or seriously hinder, execution of the judgment eventually given in the main proceedings or attainment of the objective of the proceedings. In cases in which an enforceable judgment may be issued, a legitimate interest in an interim injunction consists in the fact that – in the absence of the injunction – legal protection afforded by the final ruling in the main proceedings would be granted too late and, therefore, the claimant’s interests would be adversely affected.

Under Article 739 of the Civil Procedure Code, in the case of interim injunction proceedings, the court may make the injunction conditional on the holder depositing a sum of money in order to secure the claims of the defendant (or other persons) which may result from the execution of the interim injunction.

No response provided.

Currently, Article 2861(1)(2) of the Polish IP Act provides for a mechanism by which the owner of a patent or another IP right may file a request for an interim injunction ordering the infringer to disclose information about the origin and distribution networks of the goods or services which infringe the right (ie, information necessary for pursuing claims grounded in the IP Act against the infringer) if a violation of this right is highly probable.

Moreover, according to Article 2861(1)(3) of the Polish IP Act, an interim injunction may also instruct a person other than the infringer to provide information about the origin and distribution networks of the goods or services which infringe a patent or another IP right if the violation of this right is highly probable and that person:

  • has been found in possession of the goods which infringe the right;
  • has been found to use the services which infringe the right;
  • has been found to provide services used in activities which infringe the right;
  • has been identified by the person referred to in the three points above as involved in the production, manufacture or distribution of the goods or the provision of the services which infringe the right.

An additional necessary condition for seeking an interim injunction requires the activities referred to above to have been conducted with the purpose of obtaining, directly or indirectly, a profit or other economic benefits, thus excluding actions taken in good faith by consumers.

According to Article 2861(2) of the Polish IP Act, information provided in compliance with an interim injunction may comprise only:

  • the names and addresses of producers, manufacturers, distributors, suppliers and other previous holders of the goods or services which infringe the patent or another IP right, as well as the intended wholesalers or retailers of those goods or services; and
  • the quantity of the goods or services which infringe the patent (or another IP right) produced, manufactured, sold, received or ordered, as well as the prices paid for these goods or services.

The latest changes to the IPL, which will take effect from February 2020, modify the scope of information the owner can demand as well as the range of entities that could be forced into revealing that information. The substance matter of this provision, however, remains the same – the idea is to gather information in order to determine the scale of the infringement and possible damage related to it.

Moreover, the general rules set forth in the Civil Procedure Code may be applicable. According to Article 310 of the Civil Procedure Code, evidence may be secured, both prior to and in the course of court proceedings, if there is a risk that securing it at a later stage of the proceedings may be impossible or excessively difficult, or if it is for other reasons necessary to preserve the status quo of the subject matter of the dispute. In this context, any type of admissible evidence, including witness testimony, may be secured under an injunction.

A lawsuit should meet the formal requirements of pleadings set out in the Civil Procedure Code. Moreover, it should precisely define the claim and, if property rights are disputed, specify the monetary value of the dispute. A lawsuit should also provide an account of the facts of the case which substantiate the claim and information on whether the parties attempted to resolve the dispute by mediation or other out-of-court means. If no such attempts were made, a lawsuit should explain why they were not undertaken.

A lawsuit should state all the claims and present all the evidence as the court will not admit late claims or evidence, unless a party can show that it was unable, through no fault of its own, to plead them originally, or that admitting the late claims and evidence will not delay the proceedings, or in other extraordinary circumstances.

As regards court actions, there are no specific regulations regarding collective actions in IP matters. Collective actions are permitted under the Act of 17 July 2009 on Pursuing Claims in Group Proceedings if the same type of claim, based on the same or common factual grounds, is raised by at least ten people. However, collective actions are not, in practice, employed in cases involving IP rights.

In invalidation proceedings before the Patent Office, an application for a declaration of invalidity may be filed not only by the patent owner, but – if it is in the public interest – also by the Public Prosecutor General and the President of the Polish Patent Office. They may also intervene in ongoing proceedings.

As a general rule, action for infringement is initiated by the owner of the intellectual property right. This follows directly from the IPL, which allows the owner to file an action as well as a person entitled to do so under the law. In most cases, this entitled person – other than the owner – would be an exclusive licensee. Under the Polish regulations, only an exclusive licensee whose licence is entered in the register of the Polish Patent Office may, on equal footing with the owner, file an action against infringement (unless the licence contract states otherwise). The entrance of the exclusive licensee in the register requires a formal procedure.

The Polish legal system does not recognise indirect infringement of intellectual property rights. There are proposed amendments to the IPL that would sanction indirect infringement but these have not yet passed through Parliament.

Currently, therefore, the IPL only recognises direct infringement of industrial property rights.

In the case of patents, the scope of protection is determined by patent claims. However, descriptions and drawings can serve to interpret the patent claims. In practice, all three parts of patent specification – ie, patent claims, descriptions and drawings are taken into consideration while determining the scope of protection. Equivalent infringement could be taken into consideration in a similar way to that described in the special protocol to Article 69 of the European Patent Convention.

In relation to utility models, according to the provisions of the IPL, the scope of protection is determined by protection claims contained in the utility models’ protection specification. This discrepancy between patent and utility model provision regarding their scope of protection has been the subject of controversy in Polish law. Some stand for the literal interpretation of legal provisions and argue that the scope of protection of utility models is determined exclusively by protection claims. Others indicate that this discrepancy results from legislative error and that the scope of utility model protection should be determined in the same way as the scope of patent protection. Practice shows that this second option prevails.

The rights conferred by a patent are described in the IPL in a “negative way”, which mean that the IPL states what kind of activities could be prohibited by the patent holder. Accordingly, the patent holder may prohibit a third party, that does not have its consent, from using an invention for profit or for professional purposes involving:

  • making, using, offering, putting on the market or importing for these purposes the product that is the subject matter of the invention; or
  • using the process that is the subject matter of the invention, and also using, offering, putting on the market (or importing for these purposes) products obtained directly by that process.

However, there are several exceptions to the above when the law literally mentions the limitations of exclusivity. Moreover, there are also other defences against infringement that could be raised by the defendant.

According to the provisions concerning classic limitations on exclusivity, a patent is not infringed by:

  • the use of an invention relating to means of transport, and parts or devices thereof, that are in the Republic of Poland temporarily and also items that are in the Republic of Poland in transit;
  • the use of an invention for state purposes to the extent required, without exclusivity, if required to prevent or remove threats to important state interests, particularly as regards public safety and order;
  • the application of an invention for research and experimentation purposes in order to assess or analyse it or for teaching purposes;
  • the use of an invention to the extent required to perform activities that, pursuant to the law, are required to obtain a registration or a permit, constitute a condition for marketing certain products in view of their purpose, particularly medicinal products; and
  • the making of a medicine in a pharmacy according to an individual medical prescription.

Notwithstanding the above, there are also defences against infringement such as abuse of patent, exhaustion of rights and rights of previous user.

The justification for the provisions regarding the abuse of a patent is public interest. Accordingly a patent holder or licensee may not abuse his or her right, particularly by preventing a third party from using the invention if that use is required to meet the needs of the domestic market. Especially if this is required by the public interest and the product is not available in sufficient quantity or quality or at extremely high prices. It is worth mentioning that even if the public interest is at stake, the patent holder may prevent a third party from using his or her invention for a period of three years from the date a patent is granted and this will be not regarded as an abuse of right.

Exhaustion of right is also a “classic” limitation to exclusivity that allows the market to function in an undisturbed way. Exhaustion of a patent means that it does not extend to actions concerning a protected product or manufacturing process once it has been sold, particularly offering it for sale or further putting it on the market if that product has previously been imported into Poland by the owner of the patent or with his or her consent. This also applies when the product was previously marketed in the European Economic Area.

The Polish legal system recognises also the institution of “prior user”. A prior user is a person who uses the invention, in good faith, on the territory of Poland at the time when priority to obtain a patent is being decided. In this case, a prior user may continue to use the invention in his or her enterprise, free of charge, to the extent to which he or she has previously used it. The same relates to a anyone who, at this time, has already prepared all the essential equipment needed to use the invention.

The role of experts in patent litigation is elucidated in the Polish Civil Procedural Code. Accordingly, where special information is required, the court may, having considered the motions of the parties as to the number and selection of expert witnesses, summon one or more expert witnesses to testify.

In cases of patent infringement, the appointment of an expert witness expert is very common. In Polish civil procedure the judges have no technical background whatsoever, the report of an expert is therefore necessary to explain the technical aspects of the invention and to help the judge to determine whether there is an actual infringement.

In most cases the expert writes a report whose scope is determined by a judicial order (the judge may call the expert on his or her own initiative but in most cases the plaintiff or the defendant file a motion to call an expert on infringement).

There is no special procedure for construing the terms of the patent’s claims. It is the role of the parties to present their interpretation of a patent’s claims. Eventually it may also be the role of an expert to deliver his or her opinion on the patent’s claims and their scope.

In relation to patents, an application for a declaration of invalidity may be filed on the grounds that the invention does not meet the requirements listed in the IPL (eg, it lacks novelty, an inventive step and/or industrial applicability) or if the product or technology described in it may not be considered an invention or may be considered a non-patentable invention.

A patent may also be invalidated if the invention was not described clearly and comprehensively in the patent description, in a way enabling an expert to realise it or it was granted for an invention different than the one described in the patent claims and the patent description.

Moreover, an application for a declaration of invalidity may be filed if the patent application was submitted by a person not entitled to be granted the patent. First, though, this should be confirmed by a judgment made by a court of law stating that the patent applicant was not entitled to obtain the patent. Once such a ruling has been issued, the rightful holder may request before the Patent Office that the patent be invalidated (if it has been granted).

A patent may be revoked in whole or in part. In partial revocation, only those parts of a patent (patent claims) which do not fulfil the patentability criteria or are unclear and/or incomplete may be invalidated.

It is important to emphasise that partial revocation is not a result of the scope of the application for a declaration of invalidity, but that it is rather up to the Patent Office to decide whether the conditions for revocation have been satisfied in relation to the whole patent or merely to a part of it. If the application concerns partial cancellation of a patent, the Office may not invalidate the patent in its entirety. However, if the application concerns invalidation of the entire patent, the Office may decide on a partial cancellation as this still falls within the scope of the application.

Amendments to the claims of a patent are not allowed in cancellation proceedings. Patent claims may be amended, by adding or replacing content, only during application proceedings up until the date of grant of the patent. Therefore, amendments may not be made during any inter partes proceedings. However the application for a declaration of invalidity may be amended during the proceedings – eg, if initially the applicant demanded only partial revocation he or she may amend the application for a declaration of invalidity during the proceedings and ask for revocation of a patent in whole.

Cancellation proceedings are conducted before the Polish Patent Office, which is the only authority competent to issue administrative decisions on the grant of patents or patent validity.

Infringement cases fall within the competence of courts of general jurisdiction.

Revocation and cancellation cases are handled by the Polish Patent Office according to the provisions set out in the IPL and administrative procedure code. If a case goes to the administrative courts there are no special provisions.

In relation to infringement cases which are heard before common courts (civil or criminal – depending on the case) the provisions of the Polish Civil Procedure Code apply accordingly and there are no special provisions (nor specialised courts whatsoever except for the EU trade mark and design court). There is one exception to this rule with regard to injunction proceedings, apart from general injunction proceedings set out in the Civil Procedure Code, the owner of the intellectual property right can demand a temporary injunction according to the provisions described in the IPL.

There are no specialised courts in Poland in relation to intellectual property matters. The Polish legal system, while familiar with the institution of the jury, does not apply it to these matters.

In cases of infringement, intellectual property cases are handled by one judge who will have a legal background as the Polish legal system does not provide for technical judges. As a general rule the parties do not have any influence on who is the decision-maker; this is the internal decision of the president of the appropriate court department. Provisions of the Civil Procedure Code allow a demand for the exclusion of a judge in cases of bias or relation to one of the parties. There are also provisions in the Civil Procedure Code which allow the judge to recuse himself or herself in specific situations (such as familial relation to one of the parties).

Out-of-court negotiations to reach an amicable settlement are possible at every stage of proceedings before the court but changes to the Civil Procedure Code, dated 2016, have made mediation more and more important.

When bringing the lawsuit, the claimant is obliged to inform the court whether the parties have attempted mediation or used other alternative dispute resolution methods or, if no such attempt has been made, the reasons for failing to do so. This information is obligatory when bringing a lawsuit.

Once the lawsuit is brought before the court, the defendant also has the option to demand mediation (for example in his or her response to the lawsuit). The claimant however can refuse such a demand.

According to the Civil Procedure Code, the court itself may also refer parties to mediation at any stage of proceedings. This mediation referral order may be issued at an in camera hearing. Mediation may not be conducted if the party does not consent to it within one week after the mediation referral order is announced or served.

Additionally, the court is obliged, during the hearing, to inform the parties about their options to amicably resolve a dispute, in particular through mediation.

In patent infringement cases a common response on the part of the defendant is to file for cancellation of the patent which is the subject matter of the lawsuit. In these cases there is no uniform approach from the courts. 

If provisions regarding patent infringement are the only provisions the lawsuit is based on, the court might suspend infringement proceedings until the Polish Patent Office decides on the validity of the patent in question. Unfortunately for the claimant, this may take several years. This is not a golden rule and courts do not take a uniform stand on this issue. However, very often, besides provisions related to the patent, the claimant refers to the Law on Combatting Unfair Competition as an additional basis for his or her claims. In this case, the court should not suspend the civil proceedings, as the validity of the patent is not the only subject matter of the case. Practice shows however that courts decide on a case-by-case basis.

The remedies accessible to a patentee in an infringement case are mentioned in the IPL. These can be divided into financial ones and non-financial (but without a doubt pecuniary) ones.

In relation to non-financial remedies, the most common is for a patent holder is to demand that the patent infringer cease the infringement or hand over any unlawfully obtained benefits. If the infringement is culpable, a patent holder may also demand compensation for damage in two alternative ways.

In accordance with general principles – this refers to the general provisions of the Polish Civil Code, according to which the patentee should prove the fact of infringement, the actual damage and the link between the actions of the infringer and the damage he or she has suffered.

By paying an amount corresponding to the licence fee or other relevant remuneration that would have been due and payable to the holder for consenting to the invention being used. This is a form of lump-sum damage. There are no proof requirements, unlike in the remedy above, therefore this is the form of damage repair that patent holders seem to prefer. In order to determine the extent of the damage the opinion of a court-appointed expert is usually required.

In relation to financial damages, especially if a patent holder choses the first remedy listed above, the judge has some discretion according to general rules of Polish civil procedure. If, in an action for redress of damage, the court decides that it is impossible or extremely difficult to prove the amount claimed, the court may award an amount calculated with regard to all the facts of the case.

It is also possible for the court to adjudicate, at the holder's request, that part or all of the judgment or information on the infringement be communicated to the public in a manner and scope specified by the court.

Moreover, the court may adjudicate – at the holder's request – on products owned by the infringer, unlawfully produced and marked, and on the means and materials used to produce or mark them. The court may in particular adjudicate that they be withdrawn from the market, that the holder be awarded, on their account, a sum of money, or that they be destroyed. When adjudicating the court will take into account the seriousness of the infringement and the interests of third parties.

As part of the remedies mentioned above, the patent holder can demand reimbursement of the costs along with attorneys' fees. In practice, the sum awarded by the court is usually not as high as the actual costs borne by the winning party. 

There are two main forms of redress available to a prevailing defendant in any civil proceedings, including proceedings concerning intellectual property rights:

  • reimbursement of fees paid by the defendant throughout the proceedings (court fees and other related types of fees or costs, such as experts' costs); and
  • reimbursement of attorney’s fees.

These, together with any other costs and expenses paid by the parties during the proceedings, are known as “proceedings fees”.

According to the general rule, the above-mentioned reimbursement is paid by a party losing the trial – no matter whether he or she was the claimant or the defendant. The court’s decision concerning reimbursement constitutes a part of the final judgment in the case.

The same types of remedy are available for various types of technical intellectual property rights and neither the IPL, nor the Civil Procedure Code, introduces any differentiation in this matter. This applies to patents, rights to utility models and patents for biotechnological inventions.

Under Polish law it is possible to request an injunction before the delivery of the final ruling in the case deciding on the main claim. Such an injunction is granted by court and prevents the defendant from undertaking certain actions that may be detrimental to the claimant’s rights, or his or her economic situation.

Once granted, the injunction may be subject to modification or change; either on the application of the requesting party, or as the result of the proceedings undertaken after receiving a request for a change from the obliged party. Any modification is subject to the court’s discretion. The court’s decision on changing or annulling the injunction may by challenged by the other party to the proceedings. Once it happens (ie, once the relevant challenging motion is filed), the new decision on modification/annulment automatically becomes subject to a stay until the day this issue is resolved. However, this applies only to the decisions on modification, not the injunction as such in its prior form.

There are no special provisions regulating the appellate procedure in IP cases, the general rules governing civil procedure apply here. The appeal, as well as any other petitions and motions to the court, must fulfil all prerequisites required of standard motions in the civil proceedings.

In the case of a revocation or cancellation procedure, once the administrative decision is reached by the Polish Patent Office (eg, a decision on cancellation), there is no typical appellate procedure available. If any party to the foregoing proceedings before the Polish Patent Office is not satisfied with the decision that has been reached by the panel and would like to have it reviewed by another adjudicating body, it is possible to appeal to the Administrative Court.

In the case of infringement proceedings, the appellate proceedings are brought before an appellate court, since the competent court in the first instance is always a regional court due to the special provision included in Article 17(2) of the Civil Procedure Code.

The Polish legal system allows the parties to refer to new pieces of evidence that were not subject to court examination in the first instance. Therefore, the appellate court rules on the case by taking into account both evidence collected at this stage of proceedings, as well as evidence notified by the parties in the first instance. However, the panel of judges is entitled to refuse to accept and undertake examination of new pieces of evidence, or other details of the case, that have been submitted by a litigant at this stage of proceedings if the same party was able to provide this evidence earlier – ie, in the course of the proceedings before the court of first instance (Article 381 of the Civil Procedure Code).

The appellate court is entitled to review the case as a whole, however, the scope of examination is determined by the suit initiating the proceedings in the first instance, which means that the appellant’s request in principle cannot be changed at this stage of the proceedings.

The judgment is substantive in nature, which means that it is reached after conducting a full review of the facts of the case, as well as its legal basis and other relevant issues. The findings of the appellate court might be different than in case of the first judgment. Therefore, the case is not always sent to the first instance for re-examination.

With regard to revocation procedure, the appeal is handled by the Voivodeship Administrative Court in Warsaw (Wojewódzki Sąd Administracyjny).

The Administrative Court does not collect further evidence and, in principle, cannot undertake its own independent proceedings concerning the evidence brought by the parties. There is only one exception to this rule, according to which the court may, ex officio or after receiving the relevant motion from any party to the proceedings, examine additional evidence in the form of a written document. Therefore, both the subject of the examination, as well as its purpose, are strictly limited to exceptional circumstances. In practice, such a procedure is not often used by the court.

If the Court agrees with the appellant’s arguments and the decision is overturned, the case will be resent to the Patent Office for the purpose of another examination. Under Polish law, the Administrative Courts have very limited power to review the substantial aspects of the case.

The costs of a warning letter and negotiations with the other party are normally incurred by the patent owner.

In the case of interim injunction proceedings, where the subject matter of the injunction is a material claim, the claimant is obliged to pay a fixed fee in respect of each claim raised in the injunction request. However, if the request is filed together with the lawsuit, it is not subject to any additional fee.

In the case of a lawsuit, the claim fee is proportional to the value of the dispute; its amount equals 5% of the value of the claim, but not more than PLN200,000.

Each party bears its own expenses in the proceedings; however, in general the losing party has to reimburse the costs incurred by the winning party at the latter’s request. Reimbursement should cover the costs properly incurred by the winning party in pursuing its rights, such as the court fees, attorneys' fees, or costs of mediation if it was ordered by the court.

In certain cases, defined in the Civil Procedure Code, the court may decide on a different allocation of costs at its own discretion.

Alternative dispute resolution methods available to parties include mediation, conciliation, and arbitration proceedings. On the grounds provided for in the Civil Procedure Code (Article 1838), prior to commencement of formal litigation the court may invite the parties to an information meeting at which the court decides if the case may be settled out of court.

Mediation

This is a voluntary proceeding based on a mediation agreement between the parties or on a court order. In a mediation agreement, the parties define the subject of the mediation and either appoint the mediator or specify the method to be used for the appointment of one. Generally, mediation is held prior to the main proceedings; however, if agreed by both parties or ordered by the court, it may also take place after the proceedings have commenced.

Conciliation Proceedings

Before a lawsuit is brought, either party may invite the other party to conciliation proceedings. The proceedings are held before a judge, who, provided that the parties have reached a settlement compliant with law and public policy, makes the settlement legally binding.

Arbitration Proceedings

In cases where out-of-court settlement is permitted, parties may decide to settle the case before an arbitration court. Arbitration requires a written agreement between the parties in which they define the subject of the dispute. The agreement may also specify the method of selecting the arbitrator; otherwise, the arbitrator is designated in the manner set out in the Civil Procedure Code.

Two different rights related to patentable inventions may be assigned, namely: (i) the right to obtain a patent; and (ii) the patent itself. The right to obtain a patent (IPL, Article 11) should be treated as a separate statutory right of the inventor (subject to exceptions). The right to obtain a patent entitles the inventor to have a patent successfully granted to himself or herself in relevant administrative procedures. Being an example of a typical economic right, it might also be assigned to another person. The only legal requirement is the written form of that assignment.

Additionally, for the assignment to be enforceable against any third parties, it has to be entered into the patent register. Otherwise, the contract is valid only between the signing parties (inter partes). Lack of registration does not itself make the contract void.

There is no formal procedure for assigning the patent, nor entering into the specific contract. The parties to the assignment might be either natural persons or legal persons. After negotiations and reaching the final conclusion on the assignment itself, as well as the relevant provisions that the contract in question should contain, the parties have to sign the contract in the written form to make it binding.

Once signed, the information on the assignment should be entered into the patent register to make it enforceable against any third parties.

The parties have a wide scope of freedom in drafting provisions of a licence agreement. The only formally stated legal requirement is a written form. Unless in the written form, the contract is void and not legally binding.

There is no legal requirement for entering the information about the licence agreement into the register. A party to the agreement may request to do so, which is beneficial for the licensee in the case of an exclusive licence.

There is no one prescribed procedure for licensing a patent or a right to a utility model. The whole procedure is subject to the free will and individual needs of the contracting parties. The only condition is that the licence agreement must be made in writing. Moreover, the IPL differentiates between various types of licence agreements:

  • exclusive and non-exclusive;
  • active and passive – a passive licence is one including merely a grant of the licence itself (ie, the core element), without imposing any further obligations on the licensor; and
  • open.

An open licence agreement is listed separately due to the specific procedure of entering into the contract by the parties described in Article 80 of the IPL. The owner firstly files a statement to the Polish Patent Office, in which he or she claims that he or she is willing to grant a licence for his or her protected invention. Such a statement cannot be a subject to further modifications or annulment. Notice of this is entered into the register. Any third party interested in using the invention (ie, in having the licence granted) may either enter into the formally signed licence agreement, or begin using the invention without undertaking any prior negotiations (which he or she must inform the owner about). Such an open licence is always a full and non-exclusive licence.

Therefore, the parties are advised to reach a conclusion on the above-mentioned issues, mainly the type of agreement, and include them in the written agreement. Similarly to the assignment procedure, a right itself should be clearly stated, by including reference to its number as appearing in the Patent Register.

Traple Konarski Podrecki & Partners

ul. Królowej Jadwigi 170
30-212 Kraków
Warszawa

+48 12 426 05 30

+48 12 426 05 40

office@traple.pl www.traple.pl
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Law and Practice

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Traple Konarski Podrecki & Partners is one of the leading law firms on the Polish market. The firm's key practice areas are: industrial property law; strategic consulting and management of industrial property rights; applications and proceedings before the Patent Office and EUIPO protection against infringement and unfair competition; internet domain names; and audits and contracts. The firm also conducts training and workshops in the field of industrial property law, brand protection, and issues relating to unfair competition; the training sessions often concern new regulations, where interpretation and identification of the possible types of legal risk is particularly problematic, while being essential for the functioning of the company. The firm's intellectual property team comprises more than 20 lawyers and has been active on the market for over two decades.

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