Litigation and eligibility: Poland

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

Both Polish patents and European patents validated in Poland can be enforced before the common civil courts. In order to initiate court proceedings, a statement of claims must be lodged along with evidence. The first-instance court is the district court where the alleged infringer resides or is domiciled, or where the patent infringement was committed. The statement of claims must be reasoned and supported by relevant evidence. Polish patent attorneys may represent the patent owner before the courts in enforcement proceedings.

Enforcement of patents can also be supported by border measures available under the EU Customs Regulation (608/2013). Based on this regulation, customs protection may be granted for one year, extendable for a further year on written request. It enables the patent owner to obtain customs notification relating to the seizure of products suspected of patent infringement. Within 10 working days of receiving customs notification of the seizure (extendable for another 10 working days), the patent owner must undertake necessary legal action against the allegedly infringing goods, otherwise they will be released. A simplified procedure is also available.

There are no criminal penalties for infringement of a patent in Poland.

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

The amendments to the Code of Civil Proceedings, which entered into force on January 1 2016, strengthen the role of mediation in court proceedings. Generally, mediation is still voluntary. However, the court may refer a case to mediation at any stage of civil proceedings. If any of the parties does not consent to mediation, it will not be conducted. Before deciding on mediation, the court may invite the parties to a hearing in person. Any party that fails to appear at such hearing without reasoned justification may be burdened with the costs of the appearance incurred by the other parties. The statement of claims must state whether the parties attempted mediation in order to settle the dispute amicably. If no such attempt has been made, the plaintiff must explain why. Efforts made by a party to achieve the amicable settlement of a dispute may also influence the court’s decision on apportioning the costs of the proceedings.

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

There are neither specialised patent courts nor specialist judges to adjudicate patent infringement matters in Poland. Judges have no technical background. Analysis by a technical expert is not conducted ex officio by the court, but a party must request for a technical expert or institute to analyse the patent and provide an oral or written opinion on the allegedly infringing products.

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

In Poland, patent infringement and patent invalidity are decided separately, by two different bodies: common civil courts rule on patent infringement, while the Patent Office rules on patent invalidity. Patent Office decisions are subject to appeal to the administrative courts. A decision to grant a patent is binding on the court and should be respected as long as the patent remains valid. However, it is common practice to request the suspension of infringement proceedings based on pending invalidation proceedings. Suspension is not obligatory and practice in ordering suspension is inconsistent.

Q: Who may represent parties engaged in a dispute?

Apart from legal practitioners, Polish patent attorneys are fully entitled to represent patent owners before the courts in enforcement proceedings.

Q: To what extent is pre-trial discovery permitted?

On a reasoned request of the patent owner, an alleged infringer can be obliged by the court to provide information on the origin and distribution networks of the allegedly infringing goods or services, provided that the requested information is necessary to enforce the claims and the infringement of the patent is highly likely. In similar circumstances, the court may also oblige a party other than an alleged infringer to provide information on the origin and distribution networks of the infringing goods or services; however, to order a third party to reveal information, additional requirements must be met.

The scope of information that may be requested is limited to:

• the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the infringing goods or services, intended wholesalers or retailers of the goods or services; and
• the quantities of the produced, manufactured, delivered, received or ordered goods or services which infringe patent rights and prices obtained therefor.

Disclosure of information is decided during a court session, where both parties can be heard. When examining requests for information, the court shall protect business secrets and other confidential information. Interim injunctions or seizure of evidence can also be requested.

Q: Is cross-examination of witnesses allowed? If so, what form does this take?

Witnesses called by the parties may be cross-examined during the hearing. The parties may address questions to a witness while the witness answers to the judge. The judge may dismiss a question at his or her discretion. The aim of the examination is to establish facts and not to render opinions.

Q: What use of expert witnesses is permitted?

As patent cases require technical knowledge, it is necessary to request the court to appoint a technical expert or a science institute to explain the patent, examine infringing products and explain technical issues to the court during the infringement proceedings. Private expert opinions are allowed; however, a sole private opinion is not sufficient evidence to prove patent infringement. That said, filing an expert opinion is recommended, in particular when requesting an interim injunction. Further, a private expert opinion – once filed – constitutes court files and evidence, and the court will treat it as the relevant party’s point of view. It will also be available to the technical expert appointed by the court.

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

According to Polish law, the scope of patent protection is defined by the patent claims. Description and drawings can be used to interpret patent claims. For European patents valid in Poland, a protocol on the interpretation of Article 69 of the European Patent Convention applies and the courts shall apply the doctrine of equivalents as defined in the protocol.

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

As no specialised patent courts exist in Poland, the problems relating to patent enforcement are common to all kinds of invention. The main problem in patent cases is finding a qualified technical expert or science institute. In highly specialised technological fields (eg, computer-implemented inventions), finding a reliable expert may take some time and usually leads to the extension of the proceedings.

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

As a rule, a court decision is binding only on the particular case; therefore, courts are not bound by the opinions and decisions issued in other cases. In practice, courts frequently take into consideration the opinions and decisions of other courts regarding similar cases, since coherent and uniform court rulings guarantee the certainty and reliability of the law.

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?

Although the Polish courts are generally not bound by the reasoning of foreign courts, they may draw conclusions from foreign judgments when solving legal problems that are not precisely regulated under Polish law. Polish jurisprudence follows EU law and international treaties binding on Poland where legal issues arise in respect of these.

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

The basic method of delaying an infringement case is to start invalidation proceedings before the Patent Office. As separate authorities hear these two types of case, the initiation of invalidity proceedings may lead to suspension of the infringement proceedings until validity has been decided. Once initiated, the court proceedings can also be delayed by calling several witnesses and requesting additional expert opinions, among other things. The plaintiff may in turn object by contesting the admissibility of such evidence. Late evidence may be dismissed by the court on request of the other party.

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

A preliminary injunction may be requested before filing suit with the court, at the same time that the suit is filed or in the course of pending infringement proceedings. When granting an interim injunction before the infringement proceedings start, the court will set a deadline – usually 14 days – for the plaintiff to file suit with the court. If this deadline is missed, the injunction will lapse. The preliminary injunction is usually granted in ex parte proceedings.

In order to obtain a preliminary injunction, the patent owner must prove its legal interest in requesting the preliminary injunction and justify grounds for the injunction by proving the patent rights which have been infringed and the factual and legal circumstances of the infringement. However, the level of evidence required to obtain a preliminary injunction is lower than that in the main infringement proceedings. Claims to be secured by the preliminary injunction and the injunction measures sought (eg, seizure of infringing products, a ban on the sale of infringing products or a ban on use of the infringing method) must also be defined.

A preliminary injunction is granted for the duration of the main infringement proceedings and will lapse one month after the end of the main proceedings at the latest. If the plaintiff loses the suit or withdraws the court action before a verdict is given, the alleged infringer is entitled to demand compensation for the damages suffered as a result of the interim injunction.

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

Costs of infringement proceedings vary depending on the subject matter of the case, the factual circumstances of the infringement, the litigation strategy of the parties and the value in dispute, among other things. The total costs of the proceedings are difficult to estimate, but tend to range from €20,000 to €100,000.

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

The duration of the proceedings depends mostly on the complexity of the case. When several technical experts are called or witnesses heard, the court may appoint court hearings several times. One hearing can last from two to four hours; therefore, it can take one to two years to obtain a judgment at first instance.

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

As a rule, the losing party is burdened with the costs of the proceedings, which include the whole court fee and the winning party’s attorneys’ fees to the extent provided by the law. The attorneys’ fees awarded are established by the court in accordance with the minimum rates applicable in civil proceedings; therefore – apart from the court fee, which is usually refunded in full – recovery of costs awarded by the court is far lower than the actual costs incurred by the patent owner.

Q: What remedies are available to a successful plaintiff?

The patent owner may request:

• cessation of the infringement;
• surrender of unlawfully obtained profits;
• compensation for damages (in the case of wilful infringement); and
• publication of the judgment or of information about the judgment.

Further, on the request of the plaintiff, the court may decide on the disposal of unlawfully manufactured products and on the means and materials used for their manufacture, to the extent that they are owned by the infringer. In particular, the court may order their removal from the market, their assignment to the patent owner on the account of the amount of money owed to it or their destruction.

Where the infringement was unintentional, in certain circumstances the court may order the infringer to pay a reasonable amount of money to the patent owner instead of ordering the destruction of the products or cessation of infringement, provided that such payment adequately meets the interests of the patent owner.

Q: How are damages awards calculated? Are punitive damages available?

Damages may be compensated:

• in accordance with the general principles of law; or
• by the payment of a sum corresponding to royalties or payment of other reasonable compensation which would have been due for the authorised exploitation of the patent.

According to general principles, compensation for damages includes actual lost earnings as well as the profits that the patent owner would have received had the infringement not occurred. The real value of damages caused by the infringement must be proven.

In order to claim unlawfully obtained profits, the patent owner must prove the undue economic benefits gained by the infringer. However, there is no need to demonstrate the losses in the rights holder’s assets. It is also not necessary to prove that the unlawfully obtained profits have increased the infringer’s assets. To calculate the unlawfully obtained profits, the patent owner may refer, for example, to the real price of the infringing products sold by the infringer or to the royalty that would have been paid had the infringer acted lawfully.

Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?

Final injunctions are granted in the main proceedings if the plaintiff succeeds in the infringement action. The scope of the injunction granted depends on the claims raised by the plaintiff.

Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

Yes, the first-instance verdict can be subject to appeal to the Court of Appeal. The Court of Appeal will examine the case within the scope of appeal (substantive and procedural flaws can be raised), based on evidence collected at first instance and in the appeal proceedings. New facts and evidence can be submitted at second instance only exceptionally. Nullity of the proceedings is considered by the court ex officio.

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

Depending on the complexity of the case and workload of the appeal court, an appellate decision can be expected within one to two years.

Q: Is it possible to take cases beyond the second instance?

Against a final verdict of the Court of Appeal, a cassation complaint can be filed to the Supreme Court. A cassation complaint is an extraordinary legal remedy and may be based on two grounds only:

• breach of substantive law involving incorrect interpretation or incorrect application of substantive law; or
• breach of procedural provisions, which has had relevant effect on the result of the case.

Further, the cassation complaint is not allowed in some cases – for example, in cases concerning property rights where the value of the subject of the complaint is lower than Z50,000 (approximately €12,000).

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

Such preferences are not evident in the practice of the Polish courts.

Q: Have courts in your jurisdiction handled cases relating to standard-essential patents and fair, reasonable and non-discriminatory licensing since the ECJ’s Huawei v ZTE decision? If so, what have they decided?

No final court decisions relating to Huawei v ZTE are known to the public.

Q: If they have not handled such cases, how would you expect them to approach the issue?

Standard-essential patents were effectively enforced in Poland before Huawei v ZTE using the same approach as with any other patent. The essentiality of the patent to the particular standard was considered as a convincing argument in rendering a judgment, but not a decisive one, as the regular evidence proving that the allegedly infringing products fell under the scope of the patent claims had to be presented. Huawei v ZTE may change the courts’ approach to assessing patent infringement in relation to standard-essential patents. It can be expected that following the ECJ’s instructions, the courts will require standard-essential patent owners to provide more detailed evidence of the licensing conditions and prior consultations with the alleged infringer. Therefore, standard-essential patent owners must take the ECJ’s findings into consideration when planning their licensing and enforcement strategy.

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

No.

Q: Will your country play host to one or more divisions of the Unified Patent Court?

No.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The Polish judicial system has no IP courts. Thus, patent infringement cases are directed to common civil courts with no technical experience, which brings significant uncertainty to the result of the proceedings and inconsistency in case law. There appear to be plans to establish special IP courts in Poland, but such plans do not seem to be moving any closer to reality.

IP&Law – Kancelaria Rzeczników Patentowych J Markieta, M Zielińska-Łazarowicz Sp p

ul Wańkowicza 5A lok 23

Warsaw 02-796

Poland

Tel +48 22 254 25 35

Fax +48 22 254 25 34

Web www.ipandlaw.com

Jarosław Markieta

Partner

[email protected]

Jarosław Markieta is a European and Polish patent attorney. He graduated from the Warsaw University of Technology, where he specialised in automation and robotics. He deals with cases concerning modern technologies, in particular computer technology. He specialises in patent prosecution, but also conducts patent invalidation and enforcement actions. His specific field of interest is assisting clients in the implementation of licensing systems for the use of patented technologies in Poland. He represents clients before the Polish Patent Office, the European Patent Office and the administrative and civil courts. He cooperates with customs authorities in respect of border seizures. He is an active member of the International Association for the Protection of Intellectual Property, the International Trademark Association and the Polish Chamber of Patent Attorneys.