In August this year the Chancellery of the Prime Minister of Poland published information on the assumptions to the draft of the new Act on Industrial Property Law, which aims to replace the current Act of 30 June 2000 – Industrial Property Law (the “IPL”).
The reasons for introducing the new, comprehensive regulation include the poor clarity of the current IPL due to its numerous amendments (more than 20) and the interpretation doubts resulting therefrom, as well as the need for a quick and informal procedure to grant and maintain the protection of industrial property objects, which should be more business friendly. The authors of the assumptions also draw attention to the need to further harmonise Polish industrial property law with the relevant EU regulations.
The draft of the new Act on Industrial Property Law is not yet known as it has so far not been made publicly available. Below we present the main assumptions to the draft of the new act published by the Chancellery of the Prime Minister of Poland.
With regard to utility models, the bill provides for the introduction of provisions streamlining and speeding up the application procedure, by replacing the current examination system with a registration system. It means that (similarly as with trademarks and industrial designs) the Polish Patent Office would no longer by default examine the substantive conditions for granting a protection right to a utility model but would focus only on the formal aspects of the application. An examination of the substantive conditions would take place only when an objection by a third party is filed against a utility model application or a motion is submitted for a declaration of invalidity of a granted protection right to a utility model. This amendment aims to speed up the examination of applications for registration and shorten the time from an average 24 months to about 12 months.
With respect to industrial designs, the definition of an industrial design and the conditions for obtaining protection have been changed, so that the national regulations are fully harmonised with Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. Also, the provisions of the current IPL concerning the registration right, content of the registration right and exclusions from protection have been systematised.
With respect to trademarks, the bill provides inter alia for shortening the period of filing the opposition to 2 months from the date of publication of information about the application, dropping the current mandatory 2-month settlement period for the parties during the opposition proceedings (the so-called cooling-off period) and abolition of the joint protection right.
With regard to inventions, the draft law introduces the new concept of a preliminary invention application and proposes to consolidate the provisions on patents into one law, thus transferring the solutions to this law and repealing the Act of 14 March 2003 on Filing European Patent Applications and the Effects of the European Patent in the Republic of Poland.
In order to encourage producers to register geographical indications, the bill provides for a new procedure of registration of these rights. The proposed provisions would apply only to non-agricultural products.
Contentious proceedings before the Polish Patent Office
The bill introduces changes with respect to the manner of proceedings in cases considered under the contentious procedure. Here it is envisaged that the Polish Patent Office, acting under the contentious procedure, will as a rule make decisions during closed sittings, and not at hearings.
The bill introduces the option for the parties to conciliate to provide them with an effective alternative way of resolving a dispute adjusted to the subject matter of industrial property. The introduced conciliation proceedings would be voluntary and should take place at the request of the parties.
In order to solve the problem of unlawful acquisition of information, the bill provides for the introduction of a so-called deposit, corresponding to the provisions of Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. A deposit, containing technical and technological information constituting a trade secret, may make it easier to prove the priority of the existence of information constituting a trade secret and the subject matter of that information.
The bill provides for systematisation of the regulations on the fee collection structure and record keeping, in particular aimed at eliminating doubts as to the amount of and eligibility for the payment of fees. The draft act also introduces a new solution, according to which when filing an application for at least three different objects of industrial property within 3 months, the fee for the application for each of them may be reduced by 30%. The proposed solution offers greater support to innovators who are at the stage of building their portfolio of intellectual property rights with a commercialisation aim.
The draft of the new legislation was expected to be ready in the fourth quarter of 2021. However, recently the Chancellery of the Prime Minister of Poland updated this information providing that the planned date of adoption of the draft of the new legislation will be the first quarter of 2022.
For more information on the planned new act and how it could affect your business, contact your CMS experts: Tomasz Koryzma and Karina Zielińska-Piątkowska.