The Polish Ministry of Entrepreneurship and Technology is working on an amendment of the Act of 30 June 2000 on Industrial Property Law (IPL) prompted by reasons that include the need to correct errors in the transposition of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (referred to below as the “Directive”). In practice, numerous doubts have been raised – including those relating to the implementation of the Directive – with respect to the claim for information on account of its wording in the IPL.
By and large, the proposed changes do not affect the scope of information to be provided or the range of persons who may be requested (once the applicable statutory requirements are met) to provide the information. Nor have any additional (new) new provisions been added in order to, for example, prevent abuse of this legal instrument.
The amendment will, however, primarily affect the fundamental conditions for requesting information, which evolved substantially during the consultation process. These conditions form the focus of the present article. The volume and complexity of other provisions introduced by the ministry, relating e.g. to examination of the information claim by the court, would warrant a much more extensive discussion.
In this context, it is worth comparing the original wording of the proposed provision and its current version. Initially, the provision was formulated as follows:
“The holder of a patent, a supplementary protection right, a right of protection or a right in registration, or a person entitled under this Act may demand that the court order the person sued for infringement of this right to disclose the information that person holds on the origin and distribution networks of the goods or services which infringe the patent, supplementary protection right, right of protection or right in registration, if it is necessary to determine the scope of the asserted claims and does not prejudice a statutory obligation of secrecy, and the fact that the holder’s right was infringed has been proved.”
The current wording of the proposed change reads:
“Article 2862 . 1. The holder of a patent, a supplementary protection right, a right of protection or a right in registration, or a person entitled under this Act may request, also before bringing an action, that the court having jurisdiction to hear cases involving infringement of these rights order the infringing person to provide information on the origin, distribution networks, quantity and prices of the goods or services which is necessary to determine the scope of the claims asserted by the holder, if he is able to provide plausible evidence of infringement of the patent, supplementary protection right, right of protection or right in registration.”
It follows from the two quoted versions of the provision that the original phrasing indicates directly that the court may recognize the claim for information only if the infringement has been proved and only for the purpose of determining the scope of the asserted claims – which are therefore most probably financial claims (though in my view this is not self-evident). It should be noted that essentially only a prior court decision on this point could constitute – in this scenario – sufficient proof of infringement, which instantly gives rise to the question whether an appealable ruling would be sufficient or whether the claimant would have to wait until a final ruling is made by the appellate court. There was also a risk that the court could dismiss financial claims on the grounds of their having become time-barred; indeed, concerns were voiced that the provision was inconsistent with the spirit of the Directive. Finally, a procedure which makes the simultaneous use of the claim for information and the claim for compensatory damages or an account of profits contingent on the holder’s prior action for a cease and desist order or for removal of the effects of the infringement seems to put an excessive burden on the holder in terms of his time and financial resources.
In the current version of the proposed provision, the conditions for asserting the information claim are demonstrably relaxed. Above all, the requirement that the infringement of the holder’s right be proved has been dropped, which brings the provision’s wording close to that of the one still in force (Article 2861 IPL). However, a few ambiguities have been retained. The legislator indicates, on the one hand, that the information claim may be raised before the court is seized of the matter, and, on the other hand, that the disclosed information is necessary to determine the scope of the rightholder’s claim. This mean that the lawmakers permit the holder – before any proceedings are initiated – to obtain information which would then be used to define the scope of the claim pursued. Is thus the holder allowed to obtain information without having to bring the matter before the court or not? Moreover, it is not quite clear what types of claim are referred to – without any doubt, discovery of the scale of the infringement may influence the decision on the manner or advisability of formulating claims for prohibitory injunction or for removal of the effects of the infringement (i.e. not only monetary claims). Finally, it must be stressed that the legitimacy of the claim for disclosure of information has been made subject to the condition that plausible evidence of infringement is provided (as opposed to the requirement that the infringement be proved). Interpretation of this condition is already generating uncertainty in the absence of a parallel provision in the rules of civil procedure.
The proposed amendments to the IPL with regard to the scope of the claim for information should be considered particularly important from the perspective of the practical aspects of initiating civil proceedings. As they may still continue to evolve, we are going to keep a close watch. It must be stressed, after all, that the claim for information remains a very contentious instrument: on the one hand, it enables a market player to obtain a substantial amount of vital information about a competitor, while, on the other hand, no alternative measures seem left to the rightholder seeking to discover the scale of an infringement.