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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

To be patentable in Poland, an invention must be new, possess an inventive step and be capable of industrial application.

What are the limits on patentability?

The following are not considered inventions and cannot be patented:

  • discoveries, scientific theories and mathematical methods;
  • creations of a solely aesthetic nature;
  • schemes, rules and methods for performing mental acts, business activities and games;
  • creations which can be proved impossible to exploit in the light of commonly accepted and recognised laws of science;
  • creations or methods, whose use cannot be proven or would not produce results as expected by the applicant in the light of commonly accepted and recognised laws of science;
  • computer programs; and
  • presentations of information.

The following cannot also be patented:

  • inventions, whose use would be against public order or decency;
  • varieties of plants or animal breeds and essentially biological processes for the production of plants or animals;
  • methods for the treatment of humans or animals by surgery or therapy;
  • methods of diagnosis practised on humans or animals; and
  • certain biotechnological inventions.

To what extent can inventions covering software be patented?

Computer software cannot be patented per se and the Patent Office's practice in this regard is restrictive. However, software-assisted inventions (eg, machines which use specific software to perform certain actions) may be considered patentable, although in such cases the patent would cover the technical effect of the machine of which the software is a part rather than the software itself. Such inventions would have to be considered in detail on a case-by-case basis.

To what extent can inventions covering business methods be patented?

Business methods are excluded from patentability. However, similar to software-assisted inventions, an apparatus which somehow includes a business method in its operations could be considered patentable, although this would require careful consideration on a case-by-case basis. Regardless, such patent would not protect the business method itself.

To what extent can inventions relating to stem cells be patented?

Certain inventions relating to the human body may not be patented. These include the use of human embryos for industrial or commercial use. Therefore, stem cells derived from human embryos are not patentable. However, this does not forbid obtaining stem cells by other means, and Polish jurisprudence is likely to follow European Court of Justice case law in this regard.

Are there restrictions on any other kinds of invention?

There are restrictions on the patentability of certain biotechnological inventions. The human body at various stages of its development and the discovery of any of its elements (eg, a full or partial gene sequence) are not considered inventions and are not patentable. In contrast, elements that have been isolated from the human body or produced by a technical process are patentable. Therefore, a gene sequence obtained in such a way could be patented. Further, some specific inventions are expressly excluded from patentability on the basis of being against public order, decency and morality, including:

  • methods for cloning humans;
  • methods for modifying the genetic identity of human germlines;
  • the use of human embryos for industrial or commercial use;
  • methods for modifying the genetic identity of animals which may cause them to suffer and provide no significant medical benefits to humans or animals, and the animals which are the product of such methods.

The list is non-exhaustive – other forms of biotechnological inventions may also be considered not patentable.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

In accordance with international treaties, if an invention is disclosed at an official or officially recognised international exhibition in Poland or abroad, the priority to obtain a patent is established using the date of disclosure at such exhibition, provided that the application is filed with the Patent Office within six months.

A patent may still be granted if an invention was disclosed due to evident abuse concerning the applicant or its predecessor in title, provided that such disclosure happened no later than six months before the application was filed with the Patent Office. 

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

No pre-grant opposition is available in Poland. Third parties may inspect a patent application and submit reservations (ie, third-party observations) to the Patent Office regarding grounds that may prevent the grant of the patent. The Patent Office may decide to refuse to grant the patent after analysing these observations, but is not bound by third-party observations.

To invalidate a patent after it has been granted, a party may file an opposition or invalidation application with the Patent Office. An opposition may be filed by anyone within six months from publication of the information regarding the granting of the patent. In contrast, an invalidation application may be filed at any time, but must prove that an applicant has a legal interest in such invalidation, which may be difficult.

If an opposition is filed, the Patent Office imposes an obligation on the patentee to present its position. If the patentee claims that the opposition is groundless, the proceedings before the Patent Office continue. In other cases – in particular, when the patentee does not respond to the Patent Office's notice – the patent is invalidated.

For patent invalidation applications and oppositions (in case the patentee finds it groundless), the next step employs a so-called ‘contentious proceedings procedure’ in which the parties appear before a Patent Office adjudicating panel. The procedure is similar to that before a regular court. As a result of such proceedings, the Patent Office issues a decision and the matter is resolved. The decision may be further contested by the parties.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Third parties may submit reservations concerning a patent application to the Patent Office to prevent the grant of the patent. After analysing these reservations, the Patent Office may decide to refuse to grant the patent.

After a patent is granted, third parties may file an opposition or an invalidation application before the Patent Office. The possible invalidation of the patent is conducted by the Patent Office, which issues a decision on the matter.

How can patent office decisions be appealed in your jurisdiction?

In cases where the Patent Office’s decision is not preceded by the contentious proceedings procedure (eg, when the office refuses to grant a patent ex officio), a party may file an application with the Patent Office for reconsideration of the case, after which the office issues a second and final decision. The first-instance decision issued after the contentious proceedings procedure (eg, after an opposition or in contentious proceedings) is final and may not be reconsidered this way.

The Patent Office’s final decisions (in each of the two scenarios outlined above) may be further contested by a party by filing a complaint to the Voivodship Administrative Court in Warsaw. Such a complaint must be filed within 30 days from the receipt of the decision.

The Voivodship Administrative Court has exclusive jurisdiction over such cases. The court does not assess the merits of the Patent Office's decision, only its correctness and lawfulness from a procedural and material law perspective. The court decision may only uphold or revoke the Patent Office decision and send a case back to the Patent Office for reconsideration. The court cannot resolve the substantive issue of a case – for example, the court cannot invalidate a patent itself, it may only instruct the Patent Office to consider specific additional issues which may lead to its invalidation by the Patent Office.

Voivodship Administrative Court judgments may be further appealed by filing a cassation complaint with the Supreme Administrative Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Relatively straightforward cases usually take two to three years for the Patent Office’s final decision to be issued, depending on the type of invention that the application covers. Depending on the complexity of the case, it usually costs €5,000 to €8,000 for a patent attorney to draft a patent application and patent description plus official fees (usually less than €1,000).

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Patent infringement cases are mostly litigated before the civil courts. Typically, the patent owner files a suit with a motion for preliminary injunction enclosed, which (if successful) restricts the infringing activity (eg, the sale of goods which infringe the patent) for the duration of the proceedings. Infringement proceedings are often preceded by applying for a preliminary injunction in the separate proceedings, which are quick (in practice, a maximum of a few weeks) and may serve as leverage to launch negotiations with the defendant.

Criminal proceedings are rarely used and are only available for a limited number of offences, such as filing a patent for someone else's invention. Most instances of patent infringement are not considered crimes, and therefore, only civil proceedings are available.

What scope is there for forum selection?

In civil cases, a claim may be filed at the plaintiff's discretion before:

  • the court with jurisdiction over the defendant’s place of residence or the defendant’s registered office; or
  • the court with jurisdiction where the event which caused damage occurred (eg, where the infringing products were sold). When a patent infringement impacts different parts of Poland, plaintiffs may choose a forum easily, although recently courts have tended to limit the freedom of forum selection to courts where it can be legitimately argued that the infringement takes place.

In general, all 46 district courts (middle-level courts in Poland) have jurisdiction in patent infringement cases as first-instance courts, regardless of the case’s complexity or value.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

No specific action is required from the plaintiff before filing a suit. After filing the statement of claim, the court checks whether the formal requirements have been met (eg, payment of the court fee) and then serves the claim on the defendant, which may file a response. The parties are expected to submit motions for evidence in the statement of claim and the response. However, the court may consider motions for evidence submitted at a later date if the party proves that it could not submit earlier.

A preparatory session may be ordered by the court before the trial, but this measure is relatively new in Polish law and still uncommon. Instead of such a session, the court usually orders a first trial date. There may be multiple sessions before a judgment is issued.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Court proceedings in Poland tend to be slow regardless of the parties' efforts. There are multiple hearings in each case, which are often several months apart, during which time the case does not progress and the court hears other cases. A case may be further delayed when a person, such as a witness or party, fails to appear before the court on the date as ordered (for which they may be fined, although this occurs only if the absence is not excused). In such case, another hearing must be ordered, which is likely to take place several months later. Expert opinions often take months to be prepared and the hearings are suspended during that time.

The defendant may be interested in delaying proceedings, as this may be beneficial if a preliminary injunction in the plaintiff's favour has been granted. Parties sometimes file motions for evidence (which demand summoning additional witnesses or ordering expert opinions) as a means of delaying proceedings, among other measures.

Defendants sometimes file for patent invalidation to delay infringement proceedings. While the invalidation procedure is held before the Patent Office and not the civil court hearing the patent infringement case due to Poland’s bifurcated system, the courts sometimes stay the infringement proceedings until invalidity is decided or, in practice, appear to proceed slower when they know that invalidation proceedings are underway.

As delays are often caused by matters which the parties cannot control (at least in theory, as is the case with witness absences), the means to prevent such delays are limited. In case of motions for evidence filed by a party to delay proceedings, the court can dismiss such motions ex officio or at the request of the other party. The parties may also apply to the court to set a deadline for the presentation of their arguments. Evidence that is submitted late will be disregarded by the court (preclusion).

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A patent’s validity cannot be challenged before the Polish courts due to the country’s bifurcated system. The Patent Office is exclusively responsible for invalidation proceedings, which may be an opposition or application for patent invalidation.

At trial

What level of expertise can a patent owner expect from the courts?

Patent infringement cases are examined by ordinary civil law judges, who have a general legal background but generally no specific patent law or technical expertise.

Are cases decided by one judge, a panel of judges or a jury?

Civil cases are generally decided by a single judge at first instance, three judges in appeal proceedings and three judges in the Supreme Court. More complicated cases may be considered by panels consisting of more judges, but this is uncommon. There are no jury trials in patent cases.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist for patent cases.

What role can and do expert witnesses play in proceedings?

Parties can present opinions commissioned from experts before the court (ie, so-called ‘private opinions’), but they are not considered as evidence.

The court may also appoint expert witnesses whose opinions are considered evidence in the case. Parties may indicate expert witnesses which they would prefer to be appointed for the case, but courts have the final say. The level of technical expertise of various experts varies greatly. During proceedings, parties may:

  • highlight shortcomings in experts' opinions;
  • demand a supplementary opinion if some issues remain unclear; or
  • demand additional opinions to be prepared by different experts.

Generally, the expert witness who prepared an opinion is also summoned before the court, where cross-examination takes place and parties may question the opinion.

As judges lack technical expertise, expert opinions influence the outcome of Polish patent cases. 

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents is not explicitly stipulated in Polish statutory law, but is sometimes applied by the courts. The doctrine argues that the courts should interpret the law in a pro-EU way that is concurrent with the EU Patent Convention where the doctrine applies. The courts have adopted no clear approach in this regard. In practice, the party that wants the doctrine to be applied must persuade the court to implement it. Further, there is no established test to verify whether the differences between the invention’s features are equivalent. Case law in this regard is scarce, therefore, the issue is settled on a case-by-case basis.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

It is common for the plaintiff to apply for a preliminary injunction in patent infringement cases. The injunction may cover for example a temporary ban on introducing specific products to the market. To obtain an injunction, the plaintiff must prove that:

  • he or she has a legal interest in obtaining it (eg, because it would be impossible to achieve the purpose of the proceedings without it); and
  • the infringement claim is sufficiently substantiated.

The courts tend to examine preliminary injunctions relatively quickly (within a few days from filing) and frequently award injunctions in patent infringement cases. Preliminary injunctions are normally granted in ex parte proceedings. Thus, the defendant generally learns about the injunction only once it is served.

Preliminary orders may also cover claims to force the defendant to provide information on distribution networks of goods which infringe a patent.

How are issues around infringement and validity treated in your jurisdiction?

Polish law follows a bifurcated system – patent validity and infringement claims are strictly separated. The court examining a patent infringement case has no authority to assess the patent’s validity. Invalidation cases may be exclusively reviewed by the Patent Office in administrative proceedings. Similarly, the Patent Office cannot examine patent infringement claims.

In practice, it often happens that when the plaintiff files an infringement claim, the defendant files for invalidation. If the patent is invalidated, the infringement proceedings must be discontinued, as there is no longer a relevant right to assert. Civil courts often abstain from activity in such cases by either issuing a formal order staying proceedings or abstaining from activity until the invalidation proceedings are resolved, which has a similar effect.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The Polish courts sometimes refer to foreign case law, although all references to other cases – either foreign or local – are not considered binding precedents. They may be used by parties as a means of persuasion, but have no legal effect as such.

Damages and remedies

Can the successful party obtain costs from the losing party?

The losing party is normally ordered to pay the successful party’s legal costs, which consist of court fees (including the costs of preparing experts' opinions) and attorneys' fees. The law limits the amount of attorneys' fees which may be recovered. The limit is calculated on the basis of the complexity and value of the case. However, in practice, the successful party is likely to receive only a few thousand zloty or less as payment of legal costs, which may be a fraction of the costs actually borne.

What are the typical remedies granted to a successful plaintiff?

The available remedies are as follows:

  • obtaining an order for the cessation of the infringement (ie, a permanent injunction);
  • obtaining an order for the return of unlawfully earned benefits;
  • obtaining an order regarding the unlawful products or materials owned by the infringing party – especially through a withdrawal from the market, destruction or awarding the products or materials to the plaintiff in lieu of a monetary remedy (in practice, this claim covers the most frequent form of implementing the claim for the return of the unlawfully earned benefits);
  • obtaining an order for remedies for the damage inflicted (awarding damages); and
  • publication of the court decision.

Legal costs are also awarded to the successful party.

How are damages awards calculated? Are punitive damages available?

To receive damages, a plaintiff must prove that the infringement was culpable (ie, that the claimant's attitude was wrongful, negligent or intentional). Damages may be awarded at the plaintiff’s discretion on the basis of the following regimes:

  • the so-called ‘general terms’, which use standard civil law terms for the award of damages. In essence, these terms require the plaintiff to prove that:
    • the defendant infringed the plaintiff’s rights;
    • the plaintiff suffered damage and the amount of damage suffered;
    • there is a causal link between the infringed rights and the damage suffered; and
    • the defendant's actions were culpable;
  • payment of cash in the amount corresponding to the licence fee or other relevant remuneration which would be due if the plaintiff had consented to the use of the patent in the way that the defendant used it unlawfully.

In practice, some plaintiffs abstain from pursuing claims for damages and concentrate on seeking a permanent injunction, which is often the plaintiff’s main goal, whose conditions are more relaxed.

No punitive damages are available. The purpose of awarding damages in Polish law is to remedy only losses incurred.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Plaintiffs who want a permanent injunction must apply for it and specify the activities which the injunction should cover. Permanent injunctions are almost always granted if the defendant is found to infringe the plaintiff’s rights.

To obtain the injunction, the plaintiff must prove that the infringement has actually occurred.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Plaintiffs who want a permanent injunction must apply for it and specify the activities which the injunction should cover. Permanent injunctions are almost always granted if the defendant is found to infringe the plaintiff’s rights.

To obtain the injunction, the plaintiff must prove that the infringement has actually occurred.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The cost of patent litigation is linked to the complexity of the case. The legal costs of a first-instance patent infringement case are generally between €40,000 and €100,000.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

A first-instance court decision is not final and may be appealed. There are no restrictions regarding the right to ordinary appeal as long as it is filed on time – no leave for appeal is required. The deadline for filing an appeal is two weeks from when the appellant is served with the first-instance judgment with its reasoning.

Appeals from district courts (where patent infringement cases are considered) are heard by appellate courts. Appellate court decisions are final, enforceable and may be further contested only by extraordinary appellate measures, such as a cassation appeal submitted to the Supreme Court. The right to submit a cassation appeal is rarely granted and there are several procedural restrictions concerning such appeals. The deadline to file a cassation appeal is two months from the date on which the appellant is served with the court of appeal judgment with its reasoning.

There is no fixed term for the appellate court to examine the appeal. It usually takes the Warsaw Appellate Court two to three years to pass a judgment. In cassation appeals, a Supreme Court decision may be expected after another two years, approximately.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

As with most civil cases, parties can seek alternative means of dispute resolution, such as mediation or arbitration. Parties may also reach a settlement before the court which the court must approve. Such a settlement is enforceable.

Courts are bound to encourage parties to undertake mediation, but in practice it is not commonly used in patent infringement cases.

There is no arbitration court in Poland that specialises in patent infringement cases, but patent disputes can be brought before a permanent or ad hoc arbitration court if both parties agree. To be effective as a judgment, an arbitration court ruling must be confirmed by a common court. In practice, arbitration is rare in patent infringement cases.