28 Oct
2014

Poland

What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

Polish law offers patent owners two paths for enforcing their exclusive rights. Infringement cases – as well as other cases referring to civil aspects of patent rights – are heard before the common courts, while oppositions or motions to invalidate junior patents are recognised by the Polish Patent Office and then by the administrative courts. The first path is supported by the protection provided by the customs authorities – this gives rights holders an additional opportunity to strengthen their enforcement actions before the common courts.

Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?

There is no obligation to undertake mediation/arbitration before bringing a case before the courts. The only risk in not doing so is that even if the plaintiff wins, it could be burdened by additional fees if the defendant accepts the plaintiff’s claims. For procedural reasons, mediation/arbitration is not currently a very popular option. Discussions have been ongoing for some time about new regulations that would oblige parties to undertake mediation/arbitration before court proceedings can commence – however, these have yet to come into force.

Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

There are no specialist patent/IP courts in Poland and it can be difficult to evaluate the courts’ level of expertise. The judges are all legal professionals with no technical background; however, some of them have acquired a great deal of experience through hearing patent cases. In patent/IP matters where specialist knowledge is required, judges tend to refer to expert opinions on the technical aspects of the case.

Are validity and infringement dealt with together, or does your country have a bifurcated system?

The Polish system is bifurcated, with validity and infringement dealt with separately. Infringement cases are heard before the common courts, while validity issues are dealt with by the Polish Patent Office and then the administrative courts.

Who may represent parties engaged in a dispute?

In infringement proceedings heard by a court, a party may by represented by a professional representative such as a patent attorney, advocate or legal counsel – as well as by a person administering the property or interests of a third party who is in a permanent contractual relationship with one of the parties to the case where the matter at issue falls under the subject matter and scope of such contract. For proceedings before the Polish Patent Office, a party may be represented by any of the same professional representatives, as well as by any natural person properly authorised by the entitled party.

To what extent is pre-trial discovery permitted in cases?

There are specific legal tools allowing parties to obtain discovery of evidence in the pre-trial phase if the opposing party does not want to cooperate voluntarily with the rights holder. Before an action is brought, the owner of the patent or supplementary protection certificate (SPC) – or the party which is permitted by law to do so – is entitled to file a request before the court to secure evidence. Under some specific conditions parties can also file a request to secure the claims by obliging parties other than the infringer to provide information if this is necessary to enforce the relevant claims on the origin and distribution networks of the goods or services which infringe the patent or SPC, where the likelihood of these rights being infringed is great. Such information can include:

  • the names and addresses of producers, manufacturers, distributors, suppliers and other previous holders of the goods or services which infringe the patent, SPC, right of protection or right in registration, as well as intended wholesalers or retailers of the goods or services; and
  • information on the quantities produced, manufactured, delivered, received or ordered of the goods or services which infringe the patent, SPC, right of protection or right in registration – as well as the price obtained for these goods or services.

Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

Polish court proceedings do not directly regulate the cross-examination of witnesses. Nevertheless, during the hearing a witness called by the court must testify orally, beginning by answering the presiding judge’s questions as to what he or she knows about the case concerned and the sources of such knowledge, after which the judges and the parties – as well as their representatives – may ask the witness relevant questions. Witnesses whose testimony is contradictory may be challenged.

What use of expert witnesses is permitted?

Under common court proceedings, the court may summon one or more expert witnesses to testify in the event that special information is required and after hearing petitions from the parties as to the number and selection of expert witness. The court will appoint experts from a special court list or may request a relevant scientific or research institute for an expert opinion. The court will then determine whether expert witness testimony should be given in writing or orally – including a statement of reasons for its decision. Even if the expert witness offers only written testimony, the court should order him or her to attend the hearing to give an oral explanation of this written testimony or, if need be, to request additional testimony.

Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?

According to Polish law, the extent of protection conferred by the patent is determined by the claims included in the patent specification. Any interpretation should be carried out strictly in relation to the claims and is permitted only with reference to the patent specification and any drawings. There is no direct regulation referring to the doctrine of equivalents, so the issue is still open. Referring to court practice, it depends on the circumstances of the case. However, it can be observed that Polish courts hold non-literal equivalents under the scope of a patent claim.

Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods and software?

Software as such and business methods (including schemes and rules referring to such activities) are not patentable inventions. It is theoretically possible to obtain patent protection for software-implemented inventions, but in practice this can be extremely difficult. As to the enforcement of such rights, the procedure runs as in other cases – everything depends on the circumstances.

To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

It is the main principle that courts rule on cases under the law and are not bound by previous orders issued in other cases covering similar issues. In practice, lower-instance courts take into account the verdicts of the upper courts, including deliberately presented arguments or reasoning.

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 rule on cases based on Polish law and the judges maintain an independent position. Similar cases can be used only for the purposes of comparison in order for a party to strengthen its arguments. In some cases, although not all, the courts are willing to share the views of foreign courts, assuming that the legal regime is markedly similar – this is particularly relevant in cases where international agreements or EU law applies. However, it is difficult to predict whether Polish courts will apply case law from other jurisdictions.

What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

The latest round of amendments to the Code of Civil Procedure provided judges with some effective instruments for disciplining parties so that they do not prolong the proceedings. Nevertheless, defendants still have some tools available for delay. The usual method is to begin invalidation proceeding before the Polish Patent Office as a separate authority. Previously, this caused the court proceedings to be suspended. However, the courts are now less willing to suspend trials – instead, they tend to deliver valid and binding decisions based on the patent being granted, with all legal consequences for the patent owner. As to actions which can be taken during the court proceedings, it is still possible to object against a particular expert and his or her opinion, and/or to demand that a new expert be appointed.

Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

The Polish legal system has introduced a legal tool which is the equivalent of a preliminary injunction. Such legal means may be requested in any civil case being heard before a court or an arbitration tribunal. The court may grant it before starting the proceedings or during the proceedings. After an authorised person has obtained an enforceable title, it shall be possible to award security only if the purpose is to secure a claim for performance which is not yet due. Interim injunctions may be requested by any party or participant to the proceedings if it substantiates its claim and legal interest in the security for a claim. A legal interest in security for a claim exists if the lack of security would prevent or significantly hinder the enforcement of a ruling issued in a given case, or would otherwise prevent or seriously hinder satisfaction of the purpose of proceedings in a given case. When deciding on the method of security, the court shall consider the interests of the parties or participants to proceedings, as it is necessary to ensure adequate legal protection for the plaintiff without excessively burdening the defendant. As a rule, the purpose of security may not be to satisfy a claim.

If the application for an injunction meets the necessary requirements, it will be granted by the court.

How much should a litigant budget for in order to take a case through to a decision at first instance?

A litigant’s budget consists of two main expenses: official fees and other expenses, including remuneration for representatives. The eventual cost will depend on the value and complexity of the case. Court fees consist of fixed fees for moral rights and proportional fees for property rights. The minimum fixed fee is PLN30 and can rise to as much as PLN5,000. Proportional fees are for 5% of the value of the dispute up to a maximum of PLN100,000. Total costs are hard to predict and should be evaluated on a case-by-case basis.

How long should parties expect to wait for a decision to be handed down at first instance?

There are no specific regulations referring to the duration of proceedings. There is no accelerated or simplified procedure. Everything depends on the complexity of the case and the procedural strategy of both parties. In patent infringement cases it usually takes between one and three years to obtain a judgment.

To what extent are the winning party’s costs recoverable from the losing party?

The losing party shall – upon the request of the winning party – reimburse any reasonable costs that the winning party incurred in asserting its rights and defending itself (ie, the costs of legal proceedings). Reasonable court costs incurred by a party or its court agent other than an attorney, legal adviser or patent attorney may include court costs, travel costs of the party or its representative to the court and the equivalent of earnings lost as a result of appearing before the court. The sum of the travel costs and the equivalent of earnings lost combined must not exceed the fee of one attorney performing his or her professional activities before the court. The reasonable costs of legal proceedings incurred by a party represented by an attorney shall include the fee – which shall in no case exceed the rates determined in separate provisions – and costs of one attorney, court costs and the costs of appearing in person before the court, as summoned by the court.

What remedies are available to a successful plaintiff?

In cases of proven infringement a patent holder may demand that the infringer:

  • cease the infringing activity;
  • surrender unlawfully obtained profits; and
  • in cases of infringement caused by fault, provide redress for any damages in accordance with the general principles of law.

Additionally, when judging a patent infringement case, the court may – at the rights holder’s request – publish the judgment in full or in part, or mention the judgment, in a manner and to the extent specified by the court.

How are damages awards calculated? Is it possible to obtain punitive damages?

All damages must be proven by the plaintiff. The general principles of law regulate the way that damages are calculated as either the sum corresponding to the licence fee or other reasonable compensation. The general rules of law referring to compensation for damages include actual loss of earnings, as well as profits that might have been achieved.

It is not possible to obtain punitive damages under Polish law.

Under what circumstances might a court grant a permanent injunction? How often does this happen? Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

Each party is entitled to lodge an appeal against the first-instance judgment to a higher court in due time.

How long does it typically take for the appellate decision to be handed down?

It takes usually the appeal court between one and one-and-a-half years to issue its judgment.

Is it possible to take cases beyond the second instance?

It is possible to take the case beyond the second instance, but only under strictly defined conditions. A cassation appeal is allowed against a final judgment – although it is not admissible in cases involving property rights where the value of the subject of the appeal is less than PLN50,000. It should be based on the following grounds:

  • misinterpretation or misapplication of substantive law; or
  • infringement of the rules of procedure, where such infringement could significantly affect the outcome of a case.

It should further be filed within the timeframes specified by law.

To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Polish courts are independent and the judges grant their orders based on the factual and legal grounds of the case. The courts should be impartial and judges be bound only by the law. If the case is well prepared and all relevant circumstances are properly proven, the patent holder should expect a positive outcome at trial.

Is your jurisdiction a signatory to the London Agreement on Translations?

No.

Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

No.

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Patpol

162J Nowoursynowska Street

02-776 Warsaw

Poland

Tel +48 22 644 96 57

Fax +48 22 644 96 00

Web www.patpol.pl

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Katarzyna Melgies

Head of IP enforcement team

[email protected]

Katarzyna Melgies obtained her doctorate from the John Paul II Catholic University of Lublin Faculty of Law. She is a senior lecturer at the Department of Administrative Law, with key study areas including public health and administrative proceedings. Dr Melgies has also lectured abroad as a visiting professor. In 1999 she was officially admitted as a legal counsel to the Regional Chamber of Legal Counsel in Lublin and since then has practised as a lawyer. Dr Melgies headed Patpol’s legal department between 2003 and 2006, returning to the same role in 2013. She specialises in IP infringements, unfair competition cases and other IP enforcement matters. Dr Melgies also advises on agreements connected to IP rights. She has authored and co-authored many legal publications in her fields of academic interest, as well as in the IP field.