Allen & Overy, A Pędzich Spk - Poland
With amendments to the trademark regulations in March, further updates and refinements in October and an ongoing discussion on the concept of IP courts, 2019 has been a year of change for the Polish Industrial Property Law. This article addresses the October update, which was adopted on 16 October 2019 and will take effect on 27 February 2020.
The amendment tackles numerous aspects of the Polish Industrial Property Law in an effort to clarify and adjust Polish regulations to the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT). Given limitations of space, the sections below address three of the most important changes and highlight the remaining ones.
The amendment introduces two major alterations to the patent invalidation procedure: the grounds for pursuing the invalidation of a patent and the applicant’s legitimate interest. With regard to the former, there are currently three premises that justify invalidation:
- failure to meet all of the prerequisites necessary to obtain a patent;
- failure to demonstrate the invention clearly and completely so that an expert can realise it; and
- granting a patent for an invention that was not disclosed within the application.
After the amendment, these will be joined by a fourth premise, which will justify invalidation if the patent claims do not clearly and concisely indicate the demanded protection scope or are not supported by the patent’s description.
With regard to the applicant’s legitimate interest, a party pursuing invalidation will no longer be required to demonstrate its legitimate interest in doing so. Previously, applicants had to prove that their interest stemmed from a legally guaranteed right – specifically that the invalidity request was not solely derived from the fact that they would financially benefit from the invalidation. Verifying legitimate interest was an initial stage of the invalidation process and the lack thereof resulted in discontinuation. The amendment releases applicants from this obligation.
Overall, these changes strengthen the position of applicants in the invalidation proceedings, although not all at the same time – the amended provisions will apply to motions for invalidation filed after the amendment takes effect only.
The limitation procedure – while familiar to the EPC – is new to the Polish IP system and will allow the owner to request the limitation of the patent claims. If the relevant patent is already subject to opposition or invalidation proceedings, the owner might file the limitation motion before submitting the argumentation or before the first hearing, respectively. Proceedings can be suspended until the limitation motion is reviewed or else review might be incorporated into these proceedings. If the motion is approved, the patent protection, the scope of which may have undergone limitation, will be considered to be non-existent from the moment of filing the patent application.
The main rationale behind implementing the limitation procedure was to align European and Polish IP holders’ rights and provide entrepreneurs with an additional defence strategy when their patent is under scrutiny. IP practitioners argued for the limitation of the Polish patents but the administrative courts had consistently rejected this possibility. The amendment will resolve this.
Further representation rights for advocates and legal advisers
Initially, the Polish Industrial Property Law provided that patent attorneys could represent a party in the application proceedings and further maintenance actions before the Patent Office of the Republic of Poland (PPO) only. This approach was liberalised for the first time in 2015, when advocates and legal advisers were awarded representation rights – however, this was in trademark cases only. Following this, it was held that such cases do not require the specialised technical knowledge attributed to other patent cases.
The amendment takes another step towards liberalisation and provides advocates and legal advisers with more representation rights – this time in the case of industrial designs and geographical indications. In summary, patent attorney exclusivity will remain in cases of patents, medicinal products, plant protection products, utility models and the topographies of semiconductor products.
Other changes introduced by the October update include the following:
- Adjusting the definition of an invention to align with the EPC.
- Extending the possibility of making corrections to patent claims during the granting procedure.
- Asking the PPO for an international-type search to provide the applicant with an insight into patenting prospects in other countries.
- Dividing and clarifying the discovery motion and motion to secure evidence.
- Refining the definition of utility models so that it refers to the concept of industrial applicability, similar to patents.
- Extending the possibility of exemption from paying renewal fees to include trademarks and industrial designs.
- Introducing the possibility of excluding a member of the Dispute Adjudication Board.
- Ensuring that the opposition will no longer be reviewed in contentious proceedings.