Game-changing amendments to Polish procedural rules in IP cases

1. Specialised IP courts

On 1 July 2023, Poland will see the third anniversary of the introduction of the newly established IP courts which, as of 1 July 2020, have had exclusive jurisdiction to hear cases relating to trademarks, designs, copyright, trade secrets and unfair competition. In addition, the Warsaw IP court has had exclusive jurisdiction to hear cases relating to technical matters, in particular patent infringement proceedings and cases related to software.

The newly established courts have been accompanied by a wider legislative change, which has introduced specific provisions for IP litigation, including several novel procedural tools and solutions, such as the scheduling of pre-trial hearings, requests for preservation of evidence or requests to alleged infringers to disclose or provide evidence regarding the disputed goods, IP-specific declaration of non-infringement (DNI) action and many others. Some changes have also been made to the (already existing) information claim.

2. Upcoming amendments entering into force on 1 July 2023

However, the new set of amendments to the Polish Civil Procedure Code (CPC) that will enter into force at the beginning of July 2023 may be a real game changer in many IP cases, particularly those involving patents. The upcoming changes may be of particular interest to companies planning to launch a product falling within the scope of patent protection ("launch-at-risk") as they may benefit from the amendments. At the same time, the new rules could make life more difficult for rights holders.

2.1. Urgency in PI cases – now explicitly covered

The upcoming amendments resolve one of the doubts raised in recent years in Polish preliminary injunction (PI) proceedings, i.e. whether an application for a PI can be assessed from the perspective of so-called urgency. Although there were no explicit provisions in this regard in the CPC before, the practice of the IP courts in recent years was to take urgency into account when assessing legal interest in obtaining a preliminary injunction. Under the new provisions, there is no longer any doubt that this criterion must be applied.

The new laws expressly provide that the court will reject an application for a PI if it is filed more than six months after the patentee has become aware of the infringement. This means that obtaining a PI will now require much quicker action and more determination on the part of the patentee. Hence, this also means that the alleged infringers will have a new defence. If they can prove that the patentee obtained information about potential infringement more than six months before the PI action started, there is no fear of a preliminary injunction.

2.2. PI in IP cases only after hearing the defendant

Historically, preliminary injunctions in Poland were, in majority, granted on an ex parte basis. Under the new amendments, the courts will only be able to grant a PI in IP cases after hearing the alleged infringer. Certain exceptions to this rule will apply (e.g. where the right holder demonstrates that an immediate security is required, or that the only appropriate means of security is the seizure of goods by…