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February 2020

On 7 November 2019, the Polish President signed the act on changes in the Industrial Property Act (the Act). The draft had been discussed in the Polish Parliament since Spring 2018, and after much thought from deputies and senators, it reached its final wording and concluded its journey on the President’s desk. The changed Act should come into force within three months of its promulgation in the Dziennik Ustaw Rzeczpospolitej, and become binding in mid to late February.

What are the changes?

The changes to the Act focused mainly on clarifying and improving some procedural matters, such as:

• broadening the scope of entities allowed to represent the party in proceedings in the Patent Office (previously only a Patent Attorney, now also attorneys and legal counsels)
• improving proceedings in the Patent Office (UP), including accelerating litigation in cases for the annulment or revocation of a patent, protection right or registration right, and
• reducing the time for an expert application for Patent Office employees from 18 to 6 months.

It is also worth mentioning the exemption from periodic fees for industrial designs and trademarks of entrepreneurs (at their request) from the SME sector at the start of their business activity, which is within 3 years of its commencement.

Another important addition is the introduction of the so-called "international search". International search will enable applicants to obtain more detailed information on the "state of the art" from as early as when the application for invention stage.

This means that applicants will be able to determine what the current state of knowledge is in their area of interest, and consider whether they can submit their invention as being innovative on an international scale. It will therefore enable applicants to decide earlier whether they should (or need to) apply for international protection for the submitted invention.

Major direction shift

Two changes (to be exact one change and one addition) that are of great importance to the case law and to the general direction of jurisdiction are those in Article 89 and the brand new Article 89 constituting the regulations about the Invalidation and Lapse of a Patent (Chapter 8 of the Industrial Propriety Act).

When it comes to Article 89, it previously stated that "a patent may be declared invalid in whole or in part at the request of any person having a legitimate interest therein" (emphasis added), which made it clear that to successfully declare a patent invalid, applicants needed to prove that this decision was within their legitimate interest.

The term "legitimate interest" was not properly explained in light of industrial property law, which resulted in a practice of using the administrative meaning of said term, which was that "a legitimate interest is a substantive relationship between the applicable norm of substantive law and the legal situation of a particular entity, consisting in the fact that the act of applying the norm may affect the entity's situation in terms of substantive law" stated in judgment VI SA/Wa 1764/09.

This interpretation of legitimate interest limited the possibility to act in a preventive manner, because said interest only occurred when there was already an active competitor in the targeted market. This in turn meant that there was no room for an entrepreneur to outpace the (sometimes inevitable) clash of interests.

In the new draft, the legislator decided to remove the legitimate interest factor altogether. The new wording states that "a patent may be revoked in whole or in part at the request of anyone, who proves that (…)", which indicates that in future, entrepreneurs will have the opportunity to have more of a far-reaching strategy to protect their interest. They will be able to operate having in mind not only the ongoing competition, but also the potential one.

The meeting of expectations

Article 89 added in the changed Act finally comes forth with the awaited solution for the struggles of having a business in a highly competitive market. Previously, there was no regulation that allowed entrepreneurs to limit their patent in accordance with their needs, which in turn could burden them with numerous ongoing patent disputes.

Even if the scope of protection provided for them by law was too extensive for their needs, they could not modify the curb of said regulation. This has led to some pointless litigation in which the entrepreneur was forced to protect their non-existent interest, simply because if they didn’t, they could lose their patent protection altogether. It was an "all or nothing" regulation.

Now with this new addition to the Act, entrepreneurs have the choice to limit their patent protection. Article 81 concludes that "at the applicant’s request, the patent may be limited by the amendment of the patent claims". This new regulation introduces a new standard to the matter which now becomes more flexible and business oriented.

Conclusion

The new Industrial Property Law Act may be considered a breath of fresh air for entrepreneurs and the jurisdiction alike. The first are granted a much wider range of solutions and regulations which could be in line with the prosperity of their business, whereas the latter gains the opportunity to set brand new guidelines for molding the patent fitted to the proprietor.

Undoubtedly, the original purpose of the patent law was kept in mind by the legislator during the legislation process, which is visible in all the modifications favourable to entrepreneurs. It encourages a more prudent take on a patent strategy, as well as some improvements in the procedure itself.

If you have any questions on this article or would like to propose a subject to be addressed by Synapse please contact us.

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