A long-awaited amendment to the Polish Industrial Property Law (IPL), which will enter into force on 27 February 2020, reshapes and redefines the tools available to right owners in enforcing IP rights in civil proceedings.
The amendment, which also speeds up and simplifies Polish Patent and Trademark Office (PL PTO) proceedings and introduces important changes to patents, implements EU Directive 2004/48/EC on the enforcement of intellectual property rights and aligns Polish law with the European Patent Convention.
The most significant changes brought on by the amendment include:
IP rights enforcement: preserving evidence and sharing information
The amendment introduces important changes concerning requests for preserving evidence and obtaining information in civil proceedings. The amended law separates and gives additional definition to both by allowing for evidence, such as samples of infringing products, to be seized and secured, and by allowing information on these products (i.e. their origin, distribution channels and sale volumes) to be obtained.
Importantly, the new law again makes it possible to request information from a non-infringing third party. This possibility was removed from the IPL in 2018 following a Constitutional Tribunal ruling, which found this information request to be unconstitutional (see judgement SK 19/16).
The amendment, however, reintroduces the right to oblige a third party to provide information in certain circumstances. By doing this, the law aims at maintaining a balance between the justified interest of the right holder and the rights of third parties.
Faster and easier PL PTO proceedings
The amendment expedites post-grant opposition proceedings for patents, utility designs and industrial designs. Until now, these proceedings are conducted by a collegium and involve in-person hearings before the PL PTO. Under the amended IPL, however, an appointed expert or board of experts will issue decisions following a written procedure.
Removing legal interests from patent invalidity cases
One of the most significant patent changes is a waiver of the legal interest requirement. Under the new IPL, an invalidity applicant will no longer be required to demonstrate a legal interest in order to initiate an invalidity action. Even though demonstrating such interest in relatively easy, disputes between the parties on the existence of a legal interest often took up a significant part of the proceedings.
This change will therefore accelerate and simplify the patent invalidity process and allow parties to focus on the merits of a given case.
No need for patent attorneys in design and GI cases
The upcoming amendment has been hotly anticipated by attorneys-at-law (advocates and legal advisors) whose representation rights before the PL PTO were previously limited to contentious proceedings and trademark matters. The amendment now grants attorneys-at-law the right to act in registration proceedings concerning design and geographical indications, previously reserved for patent attorneys.
Overall, the amendment helps the Industrial Property Law better reflect market realities and allows for greater legal representation in the IP filing process.
For more information on this amendment and how it could affect your business, contact your regular CMS expert or local CMS experts: Alicja Zalewska and Julia Padlewska.
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