The amended Industrial Property Law becomes effective on 27 February 2020 (Journal of Laws of 26 November 2019, item 2309, the ‘IPL’).
The legislator intended to implement into the Polish legal order the provisions of Directive (EU) 2015/2046 of the European Parliament and of the Council regarding trademarks and Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights and to align national provisions with those applicable under the European Patent Convention. In addition, a number of new solutions has been introduced as far as opposition and litigation proceedings are concerned https://www.jwp.pl/nowelizacja-ustawy-prawo-wlasnosci-przemyslowej-pazdziernik-2019/.
Will computer programs be patentable?
With the new wording of Article 28, patenting a computer program as such will not be given the green light because computer programs will still not be treated as an invention. Schemes, rules and methods for performing mental acts, playing games or conducting business activities will also not be considered inventions. Furthermore, the scope of protection has been defined differently.
As part of the previous requirements imposed on patent claims, technical features for solutions within the category of ‘method’ had to relate to the technical impact on matter [Article 33]. The IPL amendment waived this requirement. For this category of inventions, the scope of the protection sought will be defined by patent claims relating to the acts and technical means of the method.
In the context of the requirement of the technical impact on matter now being waived, consideration might be given to a future practice of the Office regarding the protection of inventions using AI. Artificial intelligence and machine learning are based on computational models and algorithms, which as such are mathematical methods and have no technical effect. Therefore, protection of AI-based inventions as such will not be possible. If, however, a mathematical method contributes to the technical nature of the invention by the fact it serves a technical purpose (e.g., by using the processed data to, e.g., monitor the condition of a patient), it is a patentable invention under the guidelines of the European Patent Office (EPO) (see https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_3_1.htm).
The question of how the Polish Patent Office will approach the assessment of inventions using AI remains unanswered for the moment. It is to be hoped that the practice of PPO in assessing such solutions will be similar to that used by the EPO, especially because one of grounds for the IPL amendment was to bring it closer to the European law.
With the provisions on the technical impact on matter being removed from Article 33, the chances of obtaining protection are increased for so-called computer-aided inventions, i.e. solutions where there is a further technical effect going beyond the usual impact (interactions) between the program and the computer.
Until now, it was the requirement of the technical impact on matter that has been used by the Patent Office to reject requests for protection for computer-aided inventions. EPO, however, granted patent protection to such inventions. Moreover, after validation procedure, these patents entered the Polish legal order. The chances of obtaining protection for computer-aided inventions applied for under the national (in PPO) and European (in EPO) procedure are thus made equal by the amendment to Article 33 of IPL.
An effort to make the approach of EPO and PPO uniform can also be seen in the provisions introduced by the amendment that exclude from patent protection products obtained by purely biological methods of plant or animal breeding. It has also been clarified that purely biological breeding is one that consists entirely of natural phenomena, such as cross-breeding or selection [Article 29 of IPL].
Changes in how to formulate the description of the invention and how to examine patent applications
The IPL amendment has made it necessary to indicate a technical problem to be solved in the description of the invention [Article 33]. Furthermore, it has been set forth that several inventions included in one application meet the requirement of unity, if ‘there is a technical relationship between them’ based on a technical feature or features that determine the contribution of each invention to the prior art.
For the examination procedure of patent applications by the Polish Patent Office, a statutory deadline for compiling the prior art report by the Office has been introduced [Article 47 of IPL]. After the amendment, said statutory deadline is 9 months from the date of priority. This will be the time frame for the Office to draw up the prior art report for each patent application, the particulars of which are to be published. In addition, together with the report, the Office will obligatorily prepare a preliminary assessment of whether the requirement of unity of the application and the conditions required for obtaining the patent are met. In my opinion, this is a significant qualitative change that will enable applicants to obtain information about the chances of obtaining protection before the patent application is published.
The IPL amendment introduces more flexibility as far as changes to the contents of the application are concerned. With the new provisions, supplementations and corrections to the patent application (to the description and claims) – which may not, however, go beyond what was disclosed at the filing date [Article 37 of IPL] – are allowed pending the granting of the patent. Such changes could only be made previously by the time the application was published, which in practice meant that after the application was published it was only possible to narrow down the scope of the protection sought.
By contrast, the requirements for the description of the invention have been tightened. Apart from the fact that the prerequisites of novelty, inventive step and industrial applicability must be met, the invention must be presented clearly and comprehensively for those skilled in the art to realise it. Patent claims must concisely and clearly define the subject matter of the protection sought and be fully supported by the description. If even one of these criteria is not met, the Patent Office will issue a decision refusing to grant a patent [Article 49 of IPL]. For the same reasons, a patent may be revoked in whole or in part. Moreover, the amended regulations will make it much easier to eliminate patents not meeting the required criteria from legal transactions. Anyone will be able to request for revocation, whereas under the current provisions, the party requesting for revocation had to prove a legitimate interest therein. This represented a major impediment to the patent revocation procedure.
IPL amendments to how to formulate the description of the invention and how to examine patent applications plus the prerequisite of the legitimate interest being removed for requests for patent revocation are likely to force applicants to improve the quality of their patent descriptions. Therefore, it is good for the description of the invention to be prepared by professional attorneys, i.e. patent attorneys with experience in a given field of technology.
What about the ‘small patent’, i.e. the utility model?
The IPL amendment has also affected utility models, often referred to as ‘small patents’, for which protection is granted for 10 years.
First of all, the definition of the utility model has been changed. The current one, a bit archaic, will be replaced by a completely new one. In accordance with Article 94 of IPL, the utility model will be a new solution of a technical nature, suitable for industrial use, affecting the shape or construction of an object of a durable form, or an object consisting of functionally connected parts of a durable form. It has been clarified that the requirement of a durable form of an object is also retained when the product according to the utility model changes its form due to its intended use.
Following these changes, the requirements for formulating the description of the utility model have also been made stricter. Firstly, the description of the utility model application will have to specify its industrial use and secondly, it has been clearly indicated that the utility model application concerns a single solution and may consequently include one protection claim. In the description of the utility model, different forms of an object having the same essential technical features may be included. Thirdly, the scope of the protection sought should be formulated clearly and concisely. Thus, not only the definition of the utility model will change but also the requirements regarding the quality of the prepared documentation will become stricter, as is the case with patent descriptions.
Exclusive powers in proceedings before the Patent Office in cases related to filing and examining applications and maintaining the protection of inventions, medicinal products and plant protection products, utility models and layout designs of integrated circuits has been left to patent attorneys due to the need to provide professional service to applicants, requiring not only practical skills but also technical expertise.
When discussing changes to IPL, it is also good to note a number of changes in litigation proceedings before the Patent Office. For more details, see https://www.jwp.pl/uniewaznienie-patentu-bez-zbednych-formalnosci/.
Facilitating the prosecution of industrial property rights infringers
Changes will also be introduced to the procedures for enforcing claims against infringers [Article 286 of IPL]. Even before they institute proceedings, a holder of a patent or other industrial property right will be able to require, inter alia, that a reasonable number and size of samples of the goods, materials or tools used in the manufacture or distribution of those goods as well as related documents be seized. All they have to do is make a claim or a threat of infringement probable. The aim of that is that the right holder can properly preserve evidence.
Moreover, if the right holder credibly demonstrates that their industrial property right (patent, supplementary protection right, protection right or right in registration) is being infringed, they may request the court to order the infringer to provide information on the origin, distribution networks, quantities and prices of the goods or services which are necessary for the enforcement of claims by that right holder.
An important change is the widening of the circle of persons who can be affected by the requests to preserve evidence and consequently by claims by the industrial property right holder. The provisions in question will also apply to:
- a person found to be in possession of goods infringing a patent, supplementary protection right, protection right or right in registration, or
- a person using services which infringe the above-mentioned rights, or
- a person who provides services which infringe said rights, or
- a person indicated by one of the above persons as the one being involved in the production, manufacture or distribution of goods or services which infringe a patent, supplementary protection right, protection right or right in registration, the activities of said indicated person being aimed directly or indirectly at obtaining a profit or other economic advantage.
In exchange for the wealth of possibilities for obtaining data on the scale of potential infringements, the industrial property right holder must bring an effective action against the person from whom they request disclosure of information. In the absence of such an action, the entity providing the requested information shall be entitled to a claim for compensation for damage resulting from the performance of the obligation to provide information.
If the right holder has not lodged a letter initiating proceedings against the infringer within the time limit set by the court, or the letter initiating proceedings has been withdrawn, returned or rejected, or the action or request has been dismissed or the proceedings discontinued, the person providing the information will be entitled to a claim for compensation for damage caused by the performance of the obligation to provide information under general terms. The claim will be terminated if it is not enforced within one year from the date it arises.
In the light of the new regulations described above, it is good to consider having a clearance search done not only before the product or service is launched to the market. It may turn out that we use services that infringe industrial property rights and such action will already give grounds for enforcing claims by the right holder.
The IPL amendment has long been expected by entrepreneurs. On the one hand, the amendments to the provisions result in more demanding requirements as far as the quality of the descriptions of inventions is concerned and on the other hand, applicants will be able to modify the scope of protection pending a decision by the Patent Office. Furthermore, it being now possible by law to obtain information on the scale of potential infringements of industrial property rights will give the right holders a powerful weapon in the fight against infringers and potentially encourage them to make full use of the monopoly granted by the Office.
It therefore seems that in the world of industrial property, we are entering a new quality not only in terms of the rights granted, but also in terms of greater respect for industrial property. Let us hope that this will also translate into an increase in the number of protected Polish solutions and contribute to increasing the innovation of the Polish economy.