Allen & Overy, A. Pędzich sp. k. - Poland
Q: How can patent owners best enforce their rights in your jurisdiction?
Patent owners customarily pursue patent enforcement in Poland through litigation before the common courts. Proceedings on merits are usually preceded by a preliminary injunction or discovery proceedings.
A preliminary injunction aims to prevent further patent infringement by the defendant in the course of the main proceedings. Preliminary injunctions can be obtained in Poland if the applicant demonstrates high probability that a patent infringement has occurred, and if the lack of temporary protection against the infringements will result in the applicant suffering irreparable harm (ie, if the applicant demonstrates that waiting for a decision in the proceedings on merits would result in non-recoverable losses).
Discovery proceedings allow the claimant to extract commercial information from the defendant to determine the scope of an infringement. There are three measures available, varying in levels of specification:
- securing the means of evidence;
- the disclosure or issuing the means of evidence; and
- request for information.
Q: Are mediation and arbitration realistic alternatives to litigation?
Patent enforcement cases are not customarily reviewed in mediation or arbitration proceedings.
Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?
Under regular circumstances, patent cases are heard by an individual judge in the first instance and a panel of three judges in appeal proceedings. However, following 3 July 2021, this general rule was changed for the duration of the covid-19 epidemic and epidemic threat and for one year after it ceases (an official state of epidemic has been in force in Poland since 20 March 2020 and will remain so until further notice). During this time, patent cases will be heard by an individual judge in both instances, with the exception of cases that are particularly complex or unprecedented, in which case the president of the court might reinstate the three-judge panel.
Technical experts are customarily involved in patent cases in a special advisory role (they are not considered witnesses) by appointment of the court. Their opinion provides significant evidence for the resolution, but they do not participate in the decision-making process. They provide an opinion on matters that require expert knowledge, which is then the basis for the hearing judge or panel of judges to properly assess the evidence material and resolve the case.
The opinion of the technical expert is submitted as written evidence, which is then customarily subject to remarks and comments by the parties. If these are substantive, the court may decide that the technical expert should address them in a supplementary written opinion, which is followed by another round of remarks and comments. Finally, the court may decide to summon the technical expert to a hearing to give an oral explanation and answer any remaining questions in person.
Q: What level of expertise can litigants expect from courts?
From 1 July 2020 patent enforcement cases are reviewed by the specialised department of the Regional Court in Warsaw, which has been appointed as a technical court, capable of reviewing cases that have the highest degree of technical complexity. Introduction of the specialised department resulted in an increase in the expertise and experience of the judges, but it did not limit the role of the technical experts. Polish civil procedure relies on them to provide expertise whenever specialised knowledge is necessary to resolve a case. This cannot be substituted by the court’s own expertise, even if the reviewing judge has significant experience in the relevant field.
Q: Are validity and infringement dealt with together in proceedings?
Patent cases concerning validity and infringement are not dealt with together in one proceeding. Validity claims are examined by the Polish Patent Office, while patent infringement claims are examined by the specialised department of the Regional Court in Warsaw.
Q: Who may represent parties engaged in a dispute?
Parties engaged in patent disputes may be represented by advocates, attorneys at law or patent attorneys. Professional representation is obligatory, unless the value of the dispute is lower than Zl20,000 (approximately €4,500). The court might also waive this obligation in any case, on its own initiative or upon the party’s motion, if low complexity of the case does not justify the requirement of professional representation.
Q: To what extent is forum selection possible in your jurisdiction?
From 1 July 2020 forum selection is restricted in cases concerning intellectual property. In patent cases, forum is limited to the Regional Court in Warsaw, which has been designated a technical court capable of reviewing cases that have the highest degree of technical complexity.
Q: To what extent is pre-trial discovery permitted?
There are three types of discovery procedure available in the patent enforcement cases:
- Securing the means of evidence – this can be applied against the defendant or any third party that might enable the securing of the means of evidence. It aims to physically preserve certain materials that will allow for producing evidence in any future IP litigation. The claimant is not required to explicitly indicate facts that are meant to be proven, as this measure is designed to gather facts about the scope of the infringement. The court’s decision on granting this measure can be changed or repealed if the reason for granting it has changed or ceased to exist. The court may do so upon the motion filed by the party that was obliged to disclose the concerned materials, as well as by the defendant.
- Disclosure or issuing the means of evidence – the aim is to extract the means of evidence that is at the defendant’s disposal, particularly banking, financial or commercial documents. Compared to the first measure, this requires a greater level of specification from the claimant in terms of indicating what is actually requested and demonstrating that it is indeed in the possession of the defendant.
- Request for information – the most specific of the three measures, as the scope of information that may be requested is limited to data on the origin and distribution networks of goods or services, if obtaining them is necessary to pursue an IP-related claim. This can be applied against the defendant or any third party that may possess or have access to this information.
Q: To what extent is evidence written and oral at proceedings?
This depends strictly on the case and the parties’ initiative, but customarily written evidence predominates. Written evidence primarily includes documents and statements made throughout the course of the proceedings, private expert opinions submitted by the parties, as well as the opinion of the technical expert appointed by the court. Oral evidence will primarily include witness testimony, the oral explanation given by the technical expert and the oral explanation given by the parties.
If the patent case involves two commercial entities, additional rules will apply to the proceedings, resulting from the dedicated procedure for commercial cases. In this type of event, the proceedings will primarily rely on written evidence and the witness testimony will be admitted only in cases where all other evidence has failed to sufficiently explain the facts of the case that are significant for its resolution. However, this additional rule does not have a decisive effect on the patent enforcement proceedings, as witness testimony is a rarity in these disputes and the majority of the arguments are, in any case, based on the written evidence.
Q: What role, if any, can expert witnesses play?
The role of expert witnesses in Polish procedures is currently limited and restricted to simplified proceedings, which will not apply in cases concerning patents and intellectual property in general. The closest equivalent in IP cases is that parties might submit private expert opinions to support their statements; however, these are not binding in the eyes of the court. Contrary to the technical experts appointed by the court, these private experts do not have special advisory status and customarily do not provide an oral explanation before the court, although such a situation might occur.
Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?
The doctrine of equivalents was recognised by the Polish Supreme Court in V CSK 149/15 (10 December 2015) but its applicability before the common courts remains inconsistent. The Polish Supreme Court developed a five-step comparative study for the purpose of assessment on whether the disputed solution is equivalent to the one that is protected by the patent:
- determination of the patent scope on the basis of its claims, description and drawings, taking into account the technical problem constituting the grounds for a given invention and the essence of its resolution, as well as the type of protected invention;
- determination of technical features of the disputed solution, including technical problems constituting the grounds for that solution and the essence of the entire disputed solution;
- determination of technical features of the disputed solution which functionally reflect the solutions already existing in the state of the art (determination of the closest state of the art for the disputed solution);
- comparison of the determined patent scope with technical features of the disputed solution in order to verify which features of the protected solution were reflected in the disputed solution in the form of the obvious equivalents; and
- determination in cases when technical features (obvious equivalents) multiplied in the disputed solution determine the essence of the technical solution protected by the patent, whether those features could have been developed by the so-called ‘specialist’ in a given domain without knowledge of the patent.
Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?
This depends strictly on the merits of the case, but overall the patents concerning new use for existing inventions seem to be more challenging to defend before the Polish courts.
Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?
Courts are not legally obliged to consider previous cases that have covered similar issues, although these cases are customarily invoked before the court and might significantly support the party’s arguments. Although Polish courts do not operate on the basis of precedents, they are likely to follow the solidified line of reasoning of the Polish Supreme Court, by virtue of its authority.
Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?
Courts are willing to consider foreign judgments and whenever possible they are invoked by the parties to support their arguments and to present the court with a broader perspective on the merits of the case. There is no obvious preference among Polish courts as to which foreign judgments are more persuasive than others – this mostly depends on the preference of the presiding judge.
Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?
We do not see much room for these practices due to the rigorous rules of civil procedure that apply in Poland. Parties to the case must perform their actions in the time appointed by the court as failure to perform these actions will be to the detriment of the non-performing party.
Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?
A preliminary injunction can be obtained in Poland if:
- the applicant substantiates that a patent infringement has occurred; and
- the lack of temporary protection against the infringements results in the applicant suffering irreparable harm, or if the purpose of the proceedings is not achieved for other reasons even if the case is ultimately successful.
The defendant does not usually participate in these proceedings until the decision to grant a preliminary injunction is served on him or her. Nevertheless, if the defendant learns about a motion for a preliminary injunction being submitted to the court from any source, he or she may file a brief containing their arguments, which should be taken into account by the court. In this kind of case, the probability of a preliminary injunction being granted is lower than in zex parte proceedings.
Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?
Before IP courts came to Poland, it took approximately two years, depending on the complexity of a given case. However, since 1 July 2020, when the Regional Court in Warsaw was designated exclusively as a technical court capable of reviewing patent cases, this period should be considerably shorter, taking into account the relatively small amount of patent cases heard in Poland. However, at this point, due to the covid-19 situation and the associated temporary reorganisation of court operations, it is hard to say how the introduction of IP courts has affected the speed of adjudicating patent enforcement cases.
Q: How much should a litigant budget for in order to take a case through to a decision at first instance?
The costs may vary considerably depending on the complexity of the matter. A claim fee in patent cases is calculated as 5% of the total claim value with a cap of Zl200,000 (approximately €45,000). The litigant should also have additional funds to cover the fees agreed with its legal representatives for the purpose of litigation and take into account additional expenses (eg, the costs of preparing private expert witness opinions and translations).
Q: To what extent are the winning party’s costs recoverable from the losing party?
The general principle is that the legal costs of the dispute are paid by the losing party, including the obligation to reimburse the opponent with the costs incurred. If a case is partially won or lost, the costs are mutually set off or divided proportionally between the parties. Litigation costs in Poland comprise:
- court fees payable when initiating a particular case;
- expenses incurred in relation to the proceedings, which may include, among other things, remuneration of an expert witness or a court translator appointed in the case, and travel expenses of the parties or witnesses; and
- legal fees.
The attorneys’ fee awarded to the winning party must not exceed six times the minimum fee rate calculated based on the value of the dispute specified in the regulations governing the reimbursement of legal representation costs. When deciding on the amount of legal fees to be reimbursed, the court should, in particular, consider the complexity of a given case. In practice, the final amount of the legal representation costs to be reimbursed largely depends on the court’s discretion. The legal fees agreed on with the attorney and actually incurred by the party often exceed the legal representation costs reimbursable by the losing party considerably.
Q: What remedies are available to a successful plaintiff?
If the losing party does not fulfil its obligations as ordered by a final and binding court decision, a successful plaintiff may initiate enforcement proceedings. However, before the enforcement proceedings can be initiated, the court’s decision must be appended with an execution clause, which is issued by the court at the request of the successful party to court proceedings. If the losing party does not adhere to the final and binding decision ordering cessation of the patent infringement, it may be ordered to pay a specified sum of money for each day of infringement. Regarding pecuniary claims, all items or equipment forming part of the losing party’s assets can be subject to enforcement action, including movable property, real estate and bank accounts, among other things.
Q: How are damages awards calculated?
Damages may be pursued and awarded either in line with general conditions as compensation for actual damage (damnum emergens) and hypothetical but highly probable profits (lucrum cessans) or in the form of an adequate licence fee or other type of remuneration that would have been due if the patent holder had given its consent to exploit the invention.
Q: Under what circumstances will courts grant permanent injunctions?
Only a final and binding decision issued by the court constitutes a permanent injunction. A preliminary injunction is issued for the duration of the patent infringement proceedings; however, it may be reversed or changed at any time by the court at the request of the obliged party if the reason for the injunction ceases to exist or changes.
Q: Does the losing party at first instance have an automatic right of appeal?
Yes. A decision by the first-instance court may be appealed within 14 days of receipt of the copy of the judgment along with the written statement of reasons to the court of appeal. A written statement of reasons is drawn up at the request of the party willing to challenge the decision that must be submitted to the first-instance court within one week of its delivery. Preparation and delivery of the written statement of reasons to the court of appeal is subject to a fixed processing fee of Zl100 (approximately €23). The court fee for filing an appeal is calculated on a similar basis as a claim fee, that is 5% of the value of the object of appeal with a cap of Zl200,000 (approximately €45,000). The value of the object of appeal may be different from the initial claim value calculated in the first-instance proceedings (eg, if the court’s decision is to be challenged in part only).
Q: How long does it typically take for the appellate decision to be handed down?
Before IP courts came to Poland, it took approximately one year, depending on the complexity of a given case and the workload of a given court. However, since 1 July 2020, when the Court of Appeal in Warsaw was appointed exclusively as a technical court capable of reviewing appeal cases in patent matters, this period will presumably be shorter.
Q: Is it possible to take cases beyond the second instance?
Yes, under certain circumstances a cassation appeal may be submitted to the Supreme Court, which is not considered a third instance. A cessation appeal is an extraordinary means of challenge which may be submitted in patent cases if some formal conditions are met, zinter alia, the value of an object that is the subject of a cessation appeal is at least Zl50,000 (approximately €11,000), there is an important legal issue in this case or there is a need to interpret legal provisions which raise serious doubts or give rise to divergences in the case law of the courts. The preliminary acceptance of the cassation appeal is at the court’s discretion. The Supreme Court may find that none of the abovementioned preconditions for preliminary acceptance are met and refuse to examine the case.
Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?
The case law in patent cases in Poland is not uniform. The courts’ approach to patent cases varies depending on the type of patent and the category of invention that it protects. The case law in patent cases may become more uniform since specialised IP courts were exclusively appointed to hear patent cases in Poland from 1 July 2020.
Q: Are there other forums outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?
Patent cases in Poland may be theoretically reviewed in mediation or arbitration proceedings, but these alternative dispute resolution modes are not used in practice.
Q: In what circumstances do courts in your jurisdiction accommodate remote hearings, for example during pandemic-related lockdowns?
Following 3 July 2021, remote hearings that were established as a rule in civil cases (which include patent enforcement cases) for the duration of the covid-19 epidemic and epidemic threat and for one year after it will cease (a state of epidemic has been in force in Poland since 20 March 2020 and will continue to be so until further notice). This rule may be waived only if it is necessary for the case to be heard at an open hearing and holding it in the court building will cause no undue risk to the health of those in attendance. Alternatively, the presiding judge may order that a case be examined at a sitting with a camera if it is not possible to hold a remote hearing and it is not necessary to hold an open hearing with the participation of the parties.
Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?