Procedures

Application

What is the application process?

The application process for the right to registration for industrial designs starts with filing an application with the Patent Office of the Republic of Poland (PPO). The application should include:

  • a request containing at least the applicant’s data, the definition of the subject matter of the application and a petition for the grant of a right in registration; and
  • an illustration of the industrial design.

 

The latter shall consist, in particular, of drawings, photographs or samples of a textile fabric.

It is worth noting that the number of variants of the industrial design that may be covered by one application shall not exceed 10, unless these variants as a whole form a set of products. One drawing or photograph should present the figures of all the forms of the design covered by the application. Where an industrial design application has been filed in breach of this regulation, the PPO shall invite the applicant to file divisional applications within the fixed time limit (article 1081(1) of the Industrial Property Law Act (IPL Act)).

The applicant may attach to the industrial design application a description describing the illustration of the industrial design; however, it is not mandatory. Such a description may be used later only as an auxiliary measure as it does not define the scope of a protection.

The industrial design application that contains at least a request and parts that appear to be the illustration of the industrial design shall be capable of being deemed to have been filed.

Once established that the industrial design application has not been duly made up (due to formal requirements), the PPO shall decide to refuse to grant a right in registration. Otherwise, a conditional decision granting the exclusive right is issued. It becomes fully binding upon payment of the official fee.

Examination and appeals

How are the examination and appeals procedures conducted?

The PPO conducts the examination process in a registration system. Consequently, only formal requirements are checked during the examination.

If the PPO finds that some formal elements are missing in the application, it shall invite the applicant to complete the application within the fixed time limit and if they fail to do so the proceedings will be discontinued. The date on which all the deficiencies are remedied shall determine the date of filing (article 108(7) of the IPL Act).

The PPO may decide to refuse to grant a right in registration for an industrial design:

  • if the industrial design application has not been duly made up or if a form of the product or of its part evidently lacks novelty or individual character; or
  • if the product does not evidently meet legal requirements.

 

In both cases, before issuing the above-mentioned decision, a time limit shall be fixed within which the applicant may comment on evidence and documents betraying the existence of the grounds that may cause an exclusive right to be denied. The evidence and documents may extend beyond the list of the citations contained in the search report.

As far as the appeals are concerned, when the decision refusing a grant of protection is issued, general rules apply. Therefore, according to article 244(1) of the IPL Act, a request for re-examination of the matter within the meaning of the Code of Administrative Procedure may be filed. Such a request shall be substantiated. Then the case is reconsidered by an expert appointed by the President of the Patent Office of the Republic of Poland.

The time limit for submitting a request for re-examination of the matter in which a decision has been made shall be two months from the day on which the party has been served with the decision or the order (article 244(4) IPL Act).

Where a request for re-examination of the matter fails to meet formal requirements, the PPO shall invite the requesting party to correct the defects within the time limit of 30 days. Otherwise, the proceedings shall be discontinued (article 2441(1) IPL Act).

Following the re-examination of the matter, the PPO shall take a decision in which generally it either maintains the appealed decision or reverts it in whole or in part and decides on the merits. When the first instance decision is maintained, it shall be subject to complaint to the administrative courts (article 248 IPL Act).

Opposition

What are the opposition rules?

Within six months from the day the information of the grant of an exclusive right is published in Wiadomości Urzędu Patentowego (the official bulletin of the PPO), any person may give reasoned notice of opposition to a final decision of the PPO on the grant of a right in registration. The opposition may be based on the following grounds:

  • the statutory requirements for the grant of an exclusive right have not been satisfied (ie, most often, the design that has been registered lacks novelty or individual character on the filing date); and
  • the exploitation of the industrial design infringes third parties’ personal or author’s economic rights (article 117(2) of the IPL Act).

 

Where the opposition has been filed, the PPO shall immediately communicate it to the right holder and shall invite to file observations in reply within a fixed time limit. If the opposition is recognised as justified by the right holder, the PPO issues a decision to revoke the decision to grant a right in registration and to discontinue the proceedings. Otherwise, if the right holder claims that the opposition is unfounded or the right holder fails to respond to the opposition, the President of the Patent Office of the Republic of Poland shall appoint an expert (or experts) to consider and rule the case. The experts may also work together in adjudicating panels in such cases.

In opposition proceedings, the PPO adjudicates within the limits of the opposition and is bound by the legal basis indicated by the opponent (article 247(5) IPL Act).

When examining an opposition, the PPO may summon the right holder to send, within the prescribed time limit, explanations and documents relating to the subject of the case, under pain of losing the right to appoint them in the course of the proceedings.

Decisions issued by the PPO in the opposition proceedings may be subject to complaint in the administrative courts (article 248 IPL Act). The costs of this type of proceedings are adjudicated according to the rules provided in the Code of Civil Proceedings (articles 247(3) and 256(2) IPL Act).

Registration time frame

What are the registration time frames?

Statistically, the registration procedure for an industrial design at the PPO – when there are no obstacles – lasts about two to four months. On 17 March 2021, the PPO launched a ‘fast track’ procedure. One of the several conditions that have to be met to use the fast track mode is to file the application using the Platform of Electronic Services of the Patent Office.

The exclusive right lasts 25 years counted from the date of filing of an industrial design application with the PPO. The said term is divided into five-year periods.

Removal from register

In what instances does removal from the register occur?

The right in registration for an industrial design is removed from the official register in two cases: when this exclusive right lapses or is invalidated (article 118(1) in conjunction with article 92 of the IPL Act).

In this regard, it should be noted that a right in registration will lapse when:

  • the time period for which it has been granted expires;
  • the exclusive right is relinquished by its holder (or holders) before the PPO, with the consent of the parties having rights in the patent; or
  • a renewal fee is not paid within the prescribed time limit.

 

In these cases, the PPO shall make decisions on the lapse of a right in registration for industrial design and, in consequence, shall remove such right from the official register.

The second case that results in removing an exclusive right from the register of the PPO is when the decision on invalidation of such right is issued. The right in registration may be invalidated at the request of anyone who proves that the conditions for obtaining such an exclusive right have not been met (article 89(1) IPL Act).