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 the bailiff, which should normally take place 'by surprise'). In practice, however, this means a reinforcement of the existing recent practice (which emerged after the introduction of the special procedure in IP cases in 2020), whereby PI cases, at least in patent infringement matters, are usually decided in inter partes proceedings (with or without a hearing being scheduled).

2.3. Limited bifurcation – court to consider validity arguments in PI proceedings

The new rules make it clear that when assessing the grounds for a PI request in IP cases (i.e. determining whether a claim is plausible), the court must now consider the likelihood of the IP right asserted being invalidated in other pending proceedings. In the case of patents, due to the existing bifurcation principle in Poland, this refers to invalidation proceedings before the Polish Patent Office (or the EPO).

Therefore, the new rules somewhat limit the bifurcation principle. Although the court still does not have the power to invalidate a patent, for the first time it has been explicitly stated that validity arguments can be raised in infringement proceedings and need to be taken into account by the court (albeit only at the PI stage).

As a general rule, the court should assess the likelihood of invalidity based on information provided by the parties (which is in line with the requirements to hear the alleged infringer before granting security).

However, according to the amendment, the application for a PI should contain information (provided by the applicant himself) on whether invalidity proceedings are or have been pending or a declaration that the applicant is not aware of any such proceedings. Obviously, if the applicant is the right holder, invalidity proceedings will be brought against him, so it is difficult to assume that he is unaware of them. Consequently, even if the court were to conclude that – exceptionally – PI proceedings would be conducted ex parte, it would still be able to consider the validity argument before the PI is decided.

2.4. Consequences for patentees and defendants

The new rules will not only provide new arguments for defendants. Defendants will, as a rule, be able to raise not only urgency arguments, but also other issues that may undermine the right holder's claims – including arguments concerning the validity of the IP right. Thus, the new rules will also affect launch-at-risk strategies. Indeed, attempting to invalidate the IP right may now prove even more advantageous, particularly before launch. In other words, pending invalidity proceedings will allow a reduction in the risk of an effective PI action by the patentee.

Another effect of the amendment is that patentees will have to act more quickly so as not to lose the chance for an interim measure due to the expiry of the six-month urgency period. All in all, this can be seen as another advantage for the alleged infringer.

Certainly, the position of the defendants in the IP proceedings was significantly strengthened in Poland in recent years and Poland is no longer so strongly a patentee-friendly jurisdiction as it used to be perceived.