Allen & Overy, A. Pędzich sp. k. - Poland
The Polish government has announced that the Ministry of Economic Development and Technology is working on a new Industrial Property Law to replace the current Polish Industrial Property Law (30 June 2000). From the brief note published online, the legislation aims to encourage innovation among domestic entrepreneurs, relax existing procedures and tidy up the provisions governing intellectual property (the current legislation has been amended more than 20 times since its adoption). The publicly available information on the legislation suggests that the approach to many aspects of IP rights will undergo a major shift. However, the legislation might be subject to further modification and no draft law has been published so far.
With regard to patents, the legislation intends to introduce a preliminary patent application. However, the information available does not outline what this procedure would look like. There is also a plan to incorporate all provisions concerning patents contained in other acts, which would lead to the repeal of the Act on the Filing of European Patent Applications and the Effects of European Patent in the Republic of Poland (14 March 2003).
Utility model protection rights
The utility model protection regime is set to be revolutionised. The projected legislation is intended to introduce provisions that will speed up the application procedure by replacing the current examination system with a registration system. The Polish Patent Office (the PPO) would no longer examine the substantive conditions for granting utility model protection ex officio (ie, the novelty and technical nature of a given useful solution) but would focus only on the formal aspects of the application and grant utility model protection rights as soon as the relevant fees and documents were submitted. The examination of whether a given solution meets the requirements would only take place by way of another entity submitting an objection at the application stage or an application for a declaration of invalidity of a given utility model protection right. Consequently, utility models would become subject to the same rules as industrial designs and trademarks (ie, they would no longer be subject to a procedure similar to that used for inventions, the patentability of which is routinely examined by the PPO at the application stage). This amendment aims to shorten the average processing time to obtain utility design protection from 24 months to about 12 months.
Procedural changes concerning adversarial proceedings before the PPO
Cases concerning the validity and infringement of IP rights in Poland are not handled in the same proceedings. Validity claims are examined by the PPO in adversarial proceedings, while IP infringement claims are examined by specialised IP courts. However, the projected legislation would alter adversarial proceedings before the PPO.
It is envisaged that the PPO would examine such cases in a closed-court session without the parties present. This proposal is likely to cause some controversy by limiting the parties’ rights to participate in adversarial proceedings. Further, the projected legislation will allow the parties to the adversarial proceedings to make use of alternative dispute resolution methods. Conciliation proceedings would be voluntary and at the request of the parties.
New incentive for innovators
To encourage innovation, the publicly available information on the new legislation states that when filing an application for at least three different subjects of IP rights within three months, the application fee for each may be reduced by up to 30%. This would offer greater support to innovators who are building their IP portfolios.
Next steps and legislative process
According to the announcement, the draft of the proposed legislation is expected to be ready in Q4 2021 and will then have to go through the legislative process. It is expected to enter into force next year at the earliest.