Legal Alert: Changes in the Polish Industrial Law concerning patents

The purpose of the amendment was to better harmonize the provisions of the Polish Industrial Property Law on Polish patents (and, indirectly, also on the Polish validations of European patents to the extent Polish law applies to them directly) with the EU law (in particular the IP Enforcement Directive) and with the provisions of the European Patent Convention.

Key changes introduced will cover:

Changes to the patent application procedure (prosecution):

• The applicant's obligation to clearly indicate the technical problem solved by the invention is introduced.
• The requirement that the invention must have a (direct and physical) impact on the (physical) matter is abolished (potentially increasing the chances of patenting computer-implemented inventions in Poland which was close to zero in the past).
• A clear 9-month deadline (from the priority date) for the Patent Office (PPO) to prepare the prior art report, and the obligation (not an option) of the PPO to prepare an initial assessment regarding the uniformity and patentability of the invention is introduced.
• The applicant's right to request that the PPO carries out an international-type prior art search is introduced.
• An insufficient disclosure as an independent ground for refusal of registration of a patent is introduced (the patent application will be rejected if an invention is: (i) not presented in a clear and comprehensive way so that a skilled person can carry it out, (ii) the claims do not specify the subject of protection clearly and concisely and/or (iii) the claims are not entirely supported by the description of the invention).

Contentious matters (opposition/nullity action):

• An explicit right of the patentee to limit the patent by amending the claims is introduced (it was disputable in the past), and is now explicitly possible also in the course of the opposition and/or patent revocation proceedings (within specified deadlines). Limitation will have ex tunc effect. It will be possible to jointly decide the limitation and opposition/invalidation by the PPO (in its discretion).
• As a part of the new revised request for securing evidence procedure, a right of the patentee to request, among other remedies, that a reasonable amount of samples of goods, materials or the tools used to manufacture or distribute these infringing goods and related documents are seized even before the main enforcement proceedings start is introduced.
• A corrected "right of information" claim is introduced with reduced evidence threshold (the infringement has to be credible, whereas in the past a patentee must have shown that it is highly probable).
• An explicit right to claim damages for a person that was obliged to provide information under the "right of information" claim is introduced, in case the lawsuit in relation to which it was sought is not brought, retuned, rejected, dismissed or withdrawn, or the information provided was used by the patentee for purposes other than enforcement of patent protection.
• A "right of information" claim can be now addressed to the alleged infringer as well as any third party if it is found that it is in possession of the infringing goods, provides services that infringe a patent, provides services used in infringing activities, or has been identified as participating in the manufacturing or distribution of goods or providing services that infringe a patent (for profit).
• The requirement of legal interest in the invalidation of the patent is abolished. Now any person (i.e., not only a direct competitor) will have the right to request revocation of an allegedly wrongly granted patent.
• Lack of describing the object of protected solution by patent claims in a clear and concise way and/or lack of full support for the patent claims in the patent description, are explicitly added as possible grounds for invalidation of a patent.
• Opposition proceedings are no longer contentious proceedings, i.e., an opposition will be decided by a single expert of the PPO at a closed session on the basis of the opposition and the patentee's response to it. There will be no hearings in oppositions anymore.
• These changes will apply only to opposition/invalidation proceedings initiated after the entry into force of the new regulations (i.e., after 27 February 2020).

Scope of patent infringement and exemptions:

• Explicit indication that storing infringing products is also deemed a form of patent infringement is introduced.
• Amended provisions on "fair use" of patents, including revised Bolar exemption (to also cover, unlike so far, actions of third parties as long as they are required in order to obtain a marketing authorization, i.e., action of a third party acting for another party, e.g., a company that performs research and tests or manufactures API needed for regulatory approval on behalf of a future MA holder).