Q: What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

Both Polish patents and European patents validated in Poland can be enforced before the common civil courts. In order to initiate court proceedings, a statement of claims must be lodged with the first-instance court. This will be the district court where the alleged infringer resides or is domiciled, or where the patent infringement has been committed. The statement of claims must be reasoned and supported by relevant evidence. Polish patent attorneys may represent the patent holder before the courts in enforcement proceedings.

Enforcement of patents can be also supported by border measures available under the EU Customs Regulation (608/2013). Based on this regulation goods suspected of patent infringement can be seized by customs authorities ex officio. Customs protection can be established on a decision issued by the Customs Chamber in Warsaw.

Q: Are parties obliged to undertake mediation/arbitration before bringing a case before the courts? Is this a realistic alternative to litigation?

Formal mediation is rarely applied in patent enforcement cases. The latest amendments to the Code of Civil Proceedings, which entered into force on January 1 2016, strengthen the role of mediation in court proceedings. Generally, mediation is still voluntary. However, the court may refer a case to mediation at any stage of civil proceedings. If any party does not agree to mediation, it will not be conducted. The decision on this matter can be issued in a closed session. Before deciding on mediation, the parties may be invited by the court to a hearing in person. Any party that fails to appear at such hearing without justification may be burdened with the costs of the appearance incurred by the other parties. The statement of claims must state whether the parties attempted mediation in order to settle the dispute amicably. If no such attempt has been made, the plaintiff must explain why. Efforts made by a party to achieve the amicable settlement of a dispute may also influence the court’s decision on apportioning the costs of the proceedings.

Q: Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

There are neither specialised patent courts nor specialist judges to adjudicate patent infringement matters in Poland. In general, judges have no technical background. Analysis by a technical expert is not conducted ex officio by the court, but a party may request for a technical expert or institute to analyse the patent and provide an oral or written opinion on the allegedly infringing products.

Q: Are validity and infringement dealt with together, or does your country have a bifurcated system?

In Poland, patent infringement and patent invalidity are decided by two different bodies:

  • Common civil courts rule on patent infringements; and
  • The Patent Office rules on patent invalidity.

Patent Office decisions are subject to appeal to the administrative courts. A decision to grant a patent is binding on the court and should be respected as long as the patent remains valid. However, it is common practice to request the suspension of infringement proceedings based on pending invalidation proceedings. Suspension is not obligatory and practice in ordering suspension is inconsistent.

Q: Who may represent parties engaged in a dispute?

Apart from legal practitioners, Polish patent attorneys may also represent rights holders before the courts in enforcement proceedings.

Q: To what extent is pre-trial discovery permitted?

The rights holder may start pre-trial proceedings by requesting a preliminary injunction or disclosure of information. A preliminary injunction is granted without the participation of the defendant. However, where disclosure of information is requested, the court must conduct a hearing of both parties. Seizure of evidence can also be requested.

Q: Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

Parties may cross-examine witnesses during the hearing. The parties address questions to a witness while the witness answers to the judge. The judge may dismiss a question at his or her discretion.

Q: What use of expert witnesses is permitted?

Parties can request a technical expert to be appointed who will analyse patents, examine infringing products and explain technical issues to the court during infringement proceedings. A private expert opinion is not sufficient evidence to prove patent infringement; however, filing an expert opinion as part of evidentiary material is highly advisable.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does this take?

According to Polish law, the scope of patent protection is defined by the patent claims. Description and drawings can be used to interpret patent claims. For European patents valid in Poland, a protocol on the interpretation of Article 69 of the European Patent Convention applies and the courts apply the doctrine of equivalents as defined in the protocol.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

As no specialised patent courts exist in Poland, the problems relating to patent enforcement are common to all proceedings. The main issue in patent cases is the appointment of a qualified technical expert. In highly specialised technological fields, finding a reliable expert may be a critical problem.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

As a rule, a court decision is binding only on the particular case; therefore, courts are not bound by the opinions and decisions issued in other cases. In practice, courts frequently take into consideration the opinions and decisions of other courts regarding similar cases, since coherent and uniform court rulings guarantee the certainty and reliability of the law.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Although the Polish courts are generally not bound by the reasoning of foreign courts trying similar cases, they may draw conclusions from foreign judgments when solving legal problems that are not precisely regulated under Polish law. However, the individual character and particularities of foreign legal systems and the background of the specific case must be taken into account.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

The basic method of delaying an infringement case is to start a litigation proceeding before the Patent Office. As two separate authorities hear the two cases, the initiation of invalidity proceedings often causes the suspension of infringement proceedings until validity is decided. Once initiated, proceedings can be delayed by filing a large number of requests for witnesses or requesting additional expert opinions. In turn, the plaintiff may object by pointing to the redundancy of such evidence. Another way of delaying – or even blocking – an infringement claim is to start a pre-emptive proceeding to confirm the alleged infringer’s rights to use the patent (eg, prior user rights) and non-infringement.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

A request for a preliminary injunction may be filed before bringing an action at the court, simultaneously with the action or in the course of infringement proceedings. If the request is filed before infringement proceedings start, the court issuing a decision to grant the preliminary injunction will specify a deadline – usually 14 days – for bringing an action at the court. If this deadline is missed, the injunction will lapse. The preliminary injunction is granted in ex parte proceedings.

In order to obtain a preliminary injunction, it is necessary to prove legal interest and justify grounds for the injunction by proving the rights which have been infringed as well as the factual and legal circumstances of the infringement. The level of evidence allowed for granting an injunction is lower than that in the main infringement proceedings. The patent holder must also define the claims to be secured by the preliminary injunction and the injunction measures (eg, seizure of infringing products or a ban on the sale of infringing products or use of the infringing method).

A preliminary injunction is granted for the duration of the main proceedings and lapses within one month of the end of the main proceedings at the latest. If the plaintiff loses or decides to withdraw the court action before a verdict is given, the alleged infringer may demand compensation for the damages suffered as a result of the interim injunction.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

Court fees vary depending on the litigation value of the case. In practice, costs awarded by the court are far lower than the actual costs incurred by the rights holder. The total costs of the proceedings are difficult to estimate, as cases differ from one another. The main cost-creating factor relates to obtaining and securing evidence; the other factor is the number of witnesses to be heard and the structure of the claims brought. Costs can be estimated in the tens of thousands of euros.

Q: How long should parties expect to wait for a decision to be handed down at first instance?

The duration of the proceedings depends mostly on the complexity of the case. When technical experts are called or witnesses testify, court hearings may be appointed several times. One hearing can last two to four hours. It takes no less than one to two years to close a case and obtain a judgment at first instance.

Q: To what extent are the winning party’s costs recoverable from the losing party?

As a rule, the losing party is burdened with the costs of the proceedings, which include the whole court fee and the winning party’s attorneys’ fees to the extent provided by the law. However, the attorney’ fees awarded are established by the court using a table of minimum rates applicable in civil proceedings; therefore – apart from the court fee, which is usually refunded in full – recovery of costs is rather symbolic.

Q: What remedies are available to a successful plaintiff?

The rights holder may request:

  • cessation of the infringement;
  • surrender of unlawful profits;
  • compensation for damages (in the case of wilful infringement); and
  • publication of the judgment or details thereof.

Further, the court may decide on the disposal of unlawfully manufactured or marked (ie, infringing) products and the means and materials of their manufacture (to the extent that they are owned by the infringer). The court may order the removal of the products from the market, assign them to the rights holder or order their destruction.

Where the infringement was unintentional and the court decides that cessation or destruction would be excessively severe for the infringer, the court may instead order the infringer to pay a reasonable amount of money to the rights holder, provided that such payment adequately meets the interests of the rights holder.

Q: How are damages awards calculated? Is it possible to obtain punitive damages?

Damages may be compensated:

  • in accordance with the general principles of law; or
  • by the payment of a sum corresponding to royalties or another form of compensation which would have reasonably been due for the authorised exploitation of the patent.

According to general principles, compensation for damages includes actual lost earnings as well as the profits that the rights holder would have received had the infringement not occurred. The real amount of damages caused by the infringement must be proven.

In order to claim unlawfully obtained profits, the rights holder must prove the undue economic benefits gained by the infringer. There is no need to demonstrate the losses in the rights holder’s assets. It is also unnecessary to prove that the unlawfully obtained profits have increased the infringer’s assets. To calculate the unlawfully obtained profits, the rights holder may refer to the real price of the infringed products sold by the infringer or to the royalty that would have been paid had the infringer acted lawfully.

Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?

Final injunctions are granted in the main proceedings if the plaintiff succeeds in the infringement action. The scope of the injunction granted depends on the claims raised by the plaintiff.

Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

Yes. The first-instance verdict can be appealed to the Court of Appeal. The Court of Appeal will examine the case within the scope of appeal (substantive and procedural flaws can be raised), based on evidence collected at first instance and in the appeal proceedings; however, new facts and evidence can be submitted at second instance only exceptionally. Nullity of the proceedings is considered by the court ex officio.

Q: How long does it typically take for the appellate decision to be handed down?

Depending on the court where the case is lodged, an appellate decision can be expected to take at least several months.

Q: Is it possible to take cases beyond the second instance?

Against a final verdict of the Court of Appeal, a cassation complaint can be filed to the Supreme Court. A cassation complaint is an extraordinary legal remedy and may be based on two grounds only:

  • breach of substantive law involving incorrect interpretation of the law or incorrect application of substantive law; or
  • breach of procedural provisions, which has had relevant effect on the result of the case.

Further, this measure is restricted to cases where the value of the object of the complaint is over PLN50,000 (approximately €12,000).

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Such preferences are not evident in the practice of the Polish courts.

Q: Is your jurisdiction a signatory to the London Agreement on Translations?

No.

Q: Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

No.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The Polish judicial system has no IP courts. Thus, patent infringement cases are directed to regular courts with no technical experience, which brings significant uncertainty to proceedings. There have been plans to introduce special IP courts for some time; however, this idea does not seem to be getting any closer to becoming a reality.

Jarosław Markieta

This article first appeared in IAM. For further information please visit www.iam-media.com.