Intellectual property rights in Poland by Maciej Czarnik

TRILOKA Intellectual property rights in Poland TRILOKA: about the Office ........................................ 2 Foreword ................................................................... 2 Foreword ................................................................... 3 1. Intellectual property rights. An overview ............ 3 1.1. Patents .............................................................. 3 1.2. Trademarks ........................................................ 3 1.3. Industrial designs............................................... 3 1.4. Utility models ..................................................... 4 1.5. Others ............................................................... 4 1.5.1. Geographical indications ............................... 4 1.5.2. Integrated circuits ........................................ 4 1.5.3. Plant varieties ............................................... 5 1.5.4. Copyrights .................................................... 5 1.5.5. Databases .................................................... 5 2. Rights prosecution .............................................. 5 2.1. Common provisions ............................................ 5 2.1.1. Third party’s remarks ................................... 5 2.1.2. Patent Office decisions .................................. 5 2.1.3. Appeals ........................................................ 5 2.2. Patents .............................................................. 6 2.2.1. Filing and amendments ................................ 6 2.2.2. Duration ...................................................... 6 2.2.3. Basic fees ..................................................... 6 2.3. Utility models ..................................................... 7 2.3.1. Filling and modifications ............................... 7 2.3.2.Duration ...................................................... 7 2.3.3. Basic fees ..................................................... 7 2.4. Trademarks ........................................................ 7 2.4.1. Filling and modifications ............................... 7 2.4.2. Duration ...................................................... 8 2.4.3. Basic fees ..................................................... 8 2.5. Industrial designs............................................... 9 2.5.1. Filling and modifications ............................... 9 2.5.2. Duration ...................................................... 9 2.5.3. Basic fees ..................................................... 9 3. Rights invalidation ............................................ 10 3.1. Grounds........................................................... 10 3.2. Proceedings ...................................................... 10 3.2.1. Patent Office as a competent organ ............. 10 3.2.1. Oposition proceedings ................................. 10 3.2.2. Nullity proceedings ..................................... 11 3.2.1. Rights seizure ............................................. 11 Footnotes ................................................................ 11

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TRILOKA: about the Office Who we are We are patent & trademark attorneys. Our practice primarily focuses on protecting and managing industrial property in the pharmaceutical, biotechnology, cosmetics, food, dietary supplements, alcohol and chemical industries. However, we also provide our services to numerous other businesses (e.g. businesses in construction and interior design materials, furniture, toys producers, leisure services providers, publishing houses, advertising agencies, etc.). We also advise in e-business development.

What we do We process applications for intellectual property rights registrations (patents, utility models, industrial designs, trademarks, geographical indications and other), provide protection maintenance services, litigate to invalidate intellectual property rights, advise on how to commercialize intellectual property as well as litigate intellectual property infringements, advise on how to prevent these infringements and help to redress their consequences. For our foreign clients we act as a gateway to the Polish market providing a full service in Polish intellectual property matters and guidance to understand local legal and cultural particularities.

Where to find us TRILOKA Patent Attorneys ul. Kornela Ujejskiego 12/7 30-102 Krak贸w, Poland phone: fax: e-mail: web-site:

+48 12 444 14 96 or +48 12 444 14 89 +48 12 444 14 97 office@triloka.pl www.triloka.pl

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Foreword This material aims to deliver to you a brief overview of how intellectual property in Poland works, focusing on the issues of the industrial property rights prosecution and invalidation. We hope that you will find it instructive and useful as a starting point before seeking our further advice and assistance.

1. Intellectual property rights. An overview 1.1. Patents Pursuant to Polish law a patent shall be granted, as a rule, in whatever field of technology for an invention which is new, shows an inventive step and is susceptible of industrial application (art. 24 IPL). The issue of patent protection is addressed by the Industrial Property Law (in particular art. 24 ff. IPL) and by the regulation of the Prime Minister of 17 September 2001 on the filing and processing of patent and utility model applications.1

1.2. Trademarks Any sign subject to graphic representation may be considered a trademark, provided that such a sign is able to distinguish goods of one undertaking from those of another undertakings (art. 120 (1) IPL). Polish law allows also for the protection of trademarks by a joint right of protection (art. 122 (1) IPL), as well as the protection of collective trademarks (art. 136 (1) IPL) and collective guarantee trademarks (art. 137 (1) IPL). The issue of trademark protection is addressed by the Industrial Property Law (particularly art. 120 ff. IPL) and by the regulation of the Prime Minister of 8 July 2002 on the filing and processing of trademark applications. 2 Poland is also a party to the Madrid System for the International Registration of Marks.3

1.3. Industrial designs It may be registered as an industrial design any new design having individual character and the appearance of the whole or a part of a product vested therein, in particular, its lines, colours, shape, texture or materials of the product or its ornamentation (art. 102 (1) IPL). The issue of industrial design protection is addressed by Industrial Property Law (particularly art. 102 ff. IPL ) and by the regulation of the Prime Minister of 30 January 2002 on the filing and processing of industrial design applications.4 One should mind that Polish industrial design rights framework differs somewhat from that of the EU industrial design rights regime, in particular by its approval of the concept of variations of industrial design. One application may include (subject to one official fee) no more than ten variations of industrial design being separate individual appearances of a

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product sharing the same essential features (art. 108 (4) and (5) IPL). Also, unlike the EU design rights regime, to have an industrial design registered in Poland requires a submission of its description (art. 108 (6) IPL), which then helps to define the scope of the right (art. 108 (3) IPL). The Polish industrial design rights regime is considered in certain aspects to be at odds with the directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, which it aims to implement.5

1.4. Utility models Polish law allows for protection of utility models providing that a utility model shall be any new and useful solution, technical in nature, concerning shape, construction or composition of a durable object (Art. 94 (1) IPL) and further explaining that as a utility model it shall be considered a useful solution which serves the achievement of a practical effect in the course of manufacturing or the use of the product (Art. 94 (2) IPL). The utility model protection regime is considerably similar to that of patents, the main difference being the absence of the inventive step principle. It should be noted that only mechanical innovations may be protected as such (not processes as in the case of e.g. the German utility model) and protection is granted after substantive examination (not the case of numerous other national regimes e.g. German, Czech, Slovakian or Russian utility models which are subject to simple registration). This means that the length of the procedure is comparable to that of patents, which makes this not as attractive an alternative to the patent protection regime as it could be.

1.5. Others 1.5.1. Geographical indications Geographical indications still remain protected under Polish domestic industrial property law (cf. particularly art. 174 ff. IPL), despite the fact that this regulation has been devoid of virtually any meaning since the issue of geographical indications became regulated by the Council Regulation (EC) No. 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. It has been even suggested by some that these domestic law provisions be repealed.6

1.5.2. Integrated circuits Polish law allows for protection of integrated circuits. The issue of industrial design protection is addressed by the Industrial Property Law (particularly art 196 ff.) and by the regulation of the Prime Minister of 19 October 2001 on the filing and processing of the topography of integrated circuits applications.7 Registrations are sparse—as

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of 2012 there were only 12 integrated circuits registered by the Polish Patent Office.

1.5.3. Plant varieties Plant varieties are protected in Poland according to the Act of 26 June 2003 on the legal protection of plant varieties. This national system exists in parallel with the Community PVP regime.

1.5.4. Copyrights Copyrights are protected in Poland by the act of 4 February 1994 on copyright and neighbouring rights.8

1.5.5. Databases Databases are protected in Poland by the act of 27 July 2001 on the protection of databases.9

2. Rights prosecution 2.1. Common provisions 2.1.1. Third party’s remarks Following the filing of an application for an industrial property right with the Patent Office any party may submit comments to the Office aiming to prove that the industrial property right, be it patent (art. 44 (1) IPL), utility model rights (art. 44 (1) iuncta art. 100 (1) IPL) or trademark rights (art. 143 IPL) should not be granted. Such comments may be delivered throughout the duration of the proceedings and also when a decision is re-examined. It has been long held that the person who submits such comments does not become a party to the proceedings and thus is not informed of the effects of their action.10

2.1.2. Patent Office decisions Any decision by the Patent Office shall be subject to a request for re-examination. In the re-examination process the Patent Office decides upon the case in the second instance. The party must apply for re-examination of the matter in which a decision has been made within two months from the day on which the party was served with the decision (244 (4) IPL).

2.1.3. Appeals The decision issued in the re-examination proceedings is subject to an appeal with the Voivodship Administrative Court within 30 days of being served upon the party. A Court judgment may then be subject to an appeal to the Supreme Administrative Court (248 IPL) within 30 days of the day on which the judgment issued by the Voivdship Regional Administractive Court was served upon the party (art. 53 § 1 Law on proceedings before administrative courts).

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2.2. Patents 2.2.1. Filing and amendments A patent application shall consist of (art. 31 (1) IPL): - a request which shall contain at least the applicant’s data and determine the subject-matter of the application, - a description of the invention disclosing its nature, - one or more claims, - an abstract. The patent application which contains at least a request and parts which appear to be (irrespective whether they really are) a description of the invention and a patent claim or claims, shall be deemed to have been filed and so allotted the filing date and the application number (art. 31 (3) IPL). As a rule, until the final decision has been issued, the applicant is allowed to make additions and corrections to the application. However, the scope of the disclosure may not be extended after the filing date (art. 37 (1) IPL) and the scope of the protection claimed may not be extended i.e. the patent claim(s) may not be amended after the application has been published by the Patent Office (art. 37 (2) IPL). The application pending may be divided on condition the contents of the subsequent divisional applications do not go beyond the original disclosure (art. 39 and 39 1 IPL). Also during the examination of the patent application, or within two months from the date on which a decision to refuse a patent becomes final, the applicant may request utility model protection (art. 38 IPL).

2.2.2. Duration It usually takes four to six years to have a patent granted in Poland and the duration of the proceedings depends essentially on the character of the invention and the quantity of the prior art.

2.2.3. Basic fees The basic fee due on filing of the application is 500 PLN, and is covers both the costs of filing and examination. It may be higher due to an excessive number of pages in the application (further 25 PLN for any page of application, claims and drawings above 20) and the number of independent claims, and thus patentable solutions in the application (plus 50% for claiming the third and the next solutions in the same application).11 Other administrative fees are adequately low e.g. publishing an official announcement in the bulletin of the Patent Office (Wiadomości Urzędu Patentowego) that the patent has been granted and publishing the patent document in printed copies is subject to a uniform fee of 90 PLN (plus 10 PLN for any page above 10) and making changes in the patent register ‒ 70 PLN for any change. Unlike the case with European patent the fee for patent protection is due only when the patent is granted and on the condition it is granted,

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starting from 480 PLN due for the first three years of protection and then due yearly and growing systematically up to 1550 PLN for the last 20th year.

2.3. Utility models 2.3.1. Filing and modifications The requirements for the application for the utility model protection and the mode of conduct reflect those set out for patents. In particular the utility model is subject to prior substantial examination before the right is granted. The utility model application shall however in any case include drawings (art. 97 (2) IPL) with requirements to reflect its nature as a “durable object” able to be drawn and presented as such. Furthermore a utility model application may relate to one solution only (art. 97 (3) IPL), this however shall not prevent an application from comprising of various forms of the product, representing the same essential technical features of the claimed solution, as well as of the product consisting of parts inherently or functionally linked with each other (art. 97 (4) IPL).

2.3.2. Duration The length of the proceedings for utility model protection does not deviate substantially from that of the patent proceedings.

2.3.3. Basic fees The basic fee due on filing the application is 500 PLN, and this covers both the costs of filing and examination. It may be higher due to an excessive number of pages in the application (further 25 PLN for any page of application, claims and drawings above 20). Other administrative fees are adequately low e.g. publishing an official announcement in the bulletin of the Patent Office (Wiadomości Urzędu Patentowego) that the patent has been granted and publishing the patent document in printed copies is subject to a uniform fee of 90 PLN (plus 10 PLN for any page above 10) and making changes in the patent register – 70 PLN for any change. The utility model shall be protected for 10 years starting from the date of filing of an utility model application with the Patent Office (art. 95 (3) IPL), the said term being divided into four renewal periods of 3, 2, 3 and 2 years respectively (art. 105 (6) IPL). The fees due for these protection periods are 250, 300, 900, 1100 PLN respectively.

2.4. Trademarks 2.4.1. Filing and modifications A trademark application shall consist of (art. 138 (1) IPL): - a request which shall contain at least the applicant’s data - designation of the trademark - specification of goods/ services for which the trademark is intended.

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The trademark application which contains at least a request and parts which appear to be (irrespective whether they really are) the trademark and the specification of goods/services, shall be deemed to have been filed and so allotted the filing date and the application number (art. 34 (4) iuncta 138 (1) IPL). One application may relate to one trademark only and in the case of color trademarks, a sign that incorporates one arrangement of colors shall be considered as one trademark. (art. 138 (2) IPL). Where a trademark application has been filed in breach of this rule it shall be divided appropriately (art. 39 (1) iuncta art. 138 (2) IPL). Until a decision is taken, the applicant may make additions and corrections to his application, provided that such additions or corrections do not alter the essential characteristics of the trademark nor extend the list of the goods/services for which the trademark has been applied (art. 140 (1) IPL). At the same time the applicant may request the removal from the trademark components which may serve in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods (art. 140 (1) iuncta art. 129 IPL). The applicant may divide the application with respect to the indicated goods, while preserving the priority date (art. 140 (3) IPL). Also trademark rights can be so divided (art. 162 (4) IPL).

2.4.2. Duration It takes 1—1.5 years on average to have a trademark registered in Poland. It should be mentioned that the duration of the proceedings considerably shortened these last few years, however now it appears to have stabilised.

2.4.3. Basic fees The basic fee due on filling the application is 500 PLN. Other administrative fees are adequately low e.g. publishing an official announcement in the bulletin of the Patent Office (Wiadomości Urzędu Patentowego) that the right has been granted and publishing the patent document in printed copies is subject to a uniform fee of 90 PLN (plus 10 PLN for any page above 10) and making changes in the patent register ‒ 70 PLN for any change. The trademark shall be protected for 10 years extended, at the request of the right holder, for subsequent ten-year periods (art. 153 (2) and (3) IPL). The fee due for each period is 400 PLN for registration up to three Nice classes and further 450 PLN for each class above three. A fee of 200 PLN is also charged for renewals (the second and the next periods).

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2.5. Industrial designs 2.5.1. Filing and modifications An industrial design application shall consist of (art. 108 (1) IPL): - a request which shall contain at least the applicant’s data and determine the subject-matter of the application, - an illustration of the industrial design, - a description describing the illustration of the industrial design. The industrial design application which contains at least a request and parts which appear to be (irrespective whether they really are) the illustration of the industrial design and the description describing the illustration, shall be deemed to have been filed and so allotted the filing date and the application number (art. 108 (6) IPL). One application may include no more than ten variations of industrial design (art. 108 (5) IPL). (art. 108 (3) IPL). If there are more, the application shall be divided (art. 1081 IPL). As a rule the applicant is allowed to make changes to the application in the course of processing the application, he may not however alter the design itself and the variations thereof, as presented in the description, in the illustration. This shall not apply to the cases, where the claimed form of a product is modified, provided that the identity of the product is retained and the modification is requisite for the registration of the industrial design to be granted (art. 118 (2) IPL).

2.5.2. Duration It takes 3 months on average to have an industrial design registered in Poland, on the condition that the application has been duly filed. Nonetheless, considerable delays have been observed in certain cases.

2.5.3. Basic fees The basic fee due on filing the application is 300 PLN. Other administrative fees are adequately low e.g. publishing an official announcement in the bulletin of the Patent Office (Wiadomości Urzędu Patentowego) that the right has been granted and publishing the patent document in printed copies is subject to a uniform fee of 90 PLN (plus 10 PLN for any page above 10) and making changes in the patent register ‒ 70 PLN for any change. The industrial design shall be protected for 25 years starting from the date of filing of an industrial design application with the Patent Office, the said term being divided into 5-year renewal periods (art. 105 (6) IPL). The fees due for these protection periods are 400, 1000, 2000, 3000 and 4000 PLN respectively.

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3. Rights invalidation 3.1. Grounds A patent right may be declared invalid, in whole or in part, at the request of any person having a legitimate interest therein if the statutory requirements for granting a patent (i.e. novelty, inventive step, industrial applicability, sufficient disclosure) have not been satisfied (art. 89 (1) IPL). Also conditions for invalidation of other industrial property rights are worded in the same way, each time referring to the requirements which should have been satisfied in a particular case (art. 89 (1) iuncta art. 100 (1) IPL – utility models; art. 164 IPL – trademarks; art. 89 (1) iuncta art. 117 (1) IPL – industrial designs). It is further explicitly mentioned in the case of industrial design that there are grounds for invalidation of the right in registration if it can be shown that the exploitation of the industrial design infringes third parties’ economic rights (art. 117 (1) IPL).

3.2. Proceedings 3.2.1. Patent Office as a competent body There is neither a special court nor a separate administrative body for industrial property rights invalidation in Poland. The invalidation proceedings are conducted before the Patent Office, more specifically by a separate department within the Office’s organisation, taking the form of legal proceedings. The procedure is basically an administrative one, being substantially influenced by civil litigious procedural concepts, in particular it is based on the adversary principle, where evidence is expected to be produced by the parties themselves.12 The decision of the Patent Office declaring the patent invalid may be subject to an appeal to the voivodship administrative court.

3.2.1. Opposition proceedings It is possible to file opposition against the granting of an industrial property right within 6 months of the Patent Office publishing information on the grant of the issue of the right. Opposition proceedings are a sort of procedure which may precede nullity proceedings or act as their introductory stage. Within six months from the publication in the bulletin of the Patent Office (Wiadomości Urzędu Patentowego) announcing the grant of a title of protection, any person may submit to the Patent office a reasoned notice of opposition against the final decision of the Office assigning a right (art. 246 (1) IPL). The opposition must be filed on the same grounds on which a particular right may be invalidated (art. 246 (2) IPL). Unlike in case of the nullity action, legal interest of the opponent is not required. The Patent Office shall then immediately communicate the opposition to the right holder and invite him to file his

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observations within a fixed time limit (art. 247 (1) IPL). Where, following such communication from the Patent Office the right holder deems the opposition to be unjustified, the case shall be submitted for examination in legal proceedings. Otherwise the Patent Office shall decide upon whether the original decision should be reversed or not (art. 247 (2) IPL).

3.2.2. Nullity proceedings Duration Invalidation proceedings in Poland are lengthy due to the number of cases pending before the Patent Office. It is a common observation that the first hearing in the case will not take place within a year after the motion for invalidation has been filed with the Office. Legal interest The person requesting invalidation of a right shall prove his legal interest to do it, i.e. he shall be able to show that his individual, specific, own and actual statutorily protected rights have been infringed or threatened by the presence of the granted industrial property right.13 Much criticized14, this condition has been subject to liberal interpretations. Effects of a decision A decision of the Patent Office declaring the patent invalid is retroactive (ex tunc) which means that any connected legal consequences it has for third parties will also be reversed i.e. claims for any infringement of the right shall be dismissed. Time limits Except for trademarks, Polish law does not set any time limit for nullity actions. The nullity action may be brought throughout the life of the right and even when the right has lapsed.15 In the case of trademarks, rights may not as a rule be invalidated if they have been subject to prolonged (five years) undisturbed use (art. 165 IPL) as well as if the trademark opposed has not been used by the applicant, its owner (art. 166 IPL).

3.2.1. Rights seizure Where a patent application has been filed by or a patent granted to a person not entitled thereto, the person having genuine legal title to the patent may demand for the patenting proceedings to be discontinued or the patent already granted to be revoked. He may also demand to have the patent granted to himself (or to be adjudicated if the patent has already been granted) after the reimbursement of costs incurred in the patent proceedings by the former applicant or holder (art. 74 IPL). The entitled person may also demand that the unauthorized person who applied for or who has been granted the patent surrender the unlawfully obtained profits and compensates in damages (art. 290 IPL).

Footnotes

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Dz. U. of 2001, No. 102, item 1119, as am.

Dz. U. of 2002, No. 115, item 998, as am.

Cf. M. Ożóg, Protecting international trademarks in Poland: recent developments, Journal of Intellectual Property Law & Practice 2009, No. 4, p. 256-260. 4

Dz. U. of 2002, No. 40, item 358, as am.

Cf. A. Tischner, Industrial designs protection in Polish legislation in the light of Directive 98/71/EC – records of divergences, Kwartalnik Urzędu Patentowego RP, March 2011 (special issue), p. 42-44. 6

Cf. R. Skubisz, Ochrona geograficznych oznaczeń pochodzenia w prawie wspólnotowym i polskim, Europejski Przegląd Sądowy 2006, No. 2, p. 15 7

Dz. U. of 2001, No. 128, item 1413.

Cons. text: Dz. U. of 2006, No. 90, item 631, as am.

Dz.U. of 2001 No 128, item 1402

Cf. KO UP z 5.8.1974 r., Odw. 1284/74, Wiadomości Urzędu Patentowego 1974, No. 5, p. 513-514. 11

On condition of course that unity of application is preserved.

Cf. Supreme Administrative Court, judgement of 19.1.2006, II GSK 320/05, unpubl.; Supreme Administrative Court, judgement of 2.10.2007, II GSK 148/07, CBOSA. 13

Cf. Voivodship Administrative Court in Warsaw, judgement of 26.4.2012, VI SA/Wa 2146/11, CBOSA; Voivodship Administrative Court in Warsaw, judgement of 27.12.2011, VI SA/Wa 1570/11, CBOSA. 14

Cf. e.g. B. Depo, Same procedure every year: locus standi as an effective barrier to trade mark revocation for non-use in Poland, Journal of Intellectual Property Law & Practice 2010, No. 5, p. 5564. 15

Cf. Z. Miklasiński, Prawo własności przemysłowej. Komentarz, Warszawa 2001, p. 139.

Credits p. 2: Woodcut of Kraków from the Nuremberg Chronicle, 1493 (fragm.).

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