TerraLex Cross Border Patent Guide

The main source of patent law in Poland is the Industrial Property Law (of 30 June 2000). The Industrial Property Law establishes substantive patent law, in particular the prerequisites and scope of any patent protection, patent infringement proceedings, application and registration procedures before the Polish Patent Office (Polish Patent Office - PPO), as well as relevant appeals and invalidity/appeal proceedings before the PPO. In addition, there are international conventions such as the European Patent Convention (EPC).

In principle, the right to obtain a patent for an employee invention belongs to the employer, provided that the invention was made in the performance of official duties and unless the parties to the employment relationship have agreed otherwise. The above situation may be regulated by various contracts or agreements that specify the rules regarding the division of intellectual property rights between the employer and the employee.

A patentable invention is a new solution of a technical nature, which has an inventive step. An invention is considered to have an inventive step if it does not result, for a person skilled in the art, in an obvious way, from the state of the art. The invention must be suitable for industrial application, i.e. for obtaining a product or using a method in any industrial activity.

In order to meet the requirement of novelty, the invention cannot be part of the state of the art, which is understood as everything that was made available to the public before the priority date (priority date - the date of filing an application for the invention in the PPO or the date of the first correct application filed in the indicated country or the date of exhibiting the invention at an official or officially recognized international exhibition).

The invention may concern a new device, product, method, process or may constitute a significant change to existing solutions.

A special type of invention is biotechnological inventions. A biotechnological invention is understood to mean an invention concerning a product consisting of or containing biological material or a method by which biological material is produced, processed or used.

In particular, the following inventions are considered to be biotechnological inventions for which patents may be granted:

1. constituting biological material that is isolated from its natural environment or produced by a technical method, even if it previously occurred in nature;

2. constituting an element isolated from the human body or otherwise produced by a technical method, including a sequence or partial sequence of a gene, even if the structure of this element is identical to the structure of the natural element;

3. concerning plants or animals, if the technical possibilities of using the invention are not limited to a specific plant variety or animal breed.

Patents are not granted for:

1. inventions, the use of which would be contrary to public order or good customs. In the case of biotechnological inventions, the following are considered contrary to public order or public morality: methods of cloning humans, methods of modifying the genetic identity of the human germ line, the use of human embryos for industrial or commercial purposes, methods of modifying the genetic identity of animals that may cause suffering in them without bringing any significant medical benefits to humans or animals, and animals resulting from the use of such methods;
2. plant varieties or animal breeds and purely biological methods of breeding plants or animals;
3. methods of treating humans and animals by surgical or therapeutic methods and diagnostic methods used on humans or animals.

Solutions that are not inventions. The following are, in particular, not considered inventions within the meaning of article 24 of The Industrial Property Law (patents are granted - in all fields of technology - for inventions that are new, involve an inventive step and are susceptible of industrial application):

1. discoveries, scientific theories and mathematical methods;
2. products of a solely aesthetic nature;
3. schemes, principles and methods for performing mental acts, doing business or playing games;
4. products or methods: a) the possibility of using which cannot be demonstrated; or b) whose use will not bring about the result anticipated by the applicant - in the light of generally adopted and recognised rules of science;
5. computer programs;
6. presentations of information.

Until recently, the PPO was reluctant to examine computer-implemented inventions, especially computer programs, and rarely granted them patent protection, generally considering many of them as solutions that were not inventions. Meanwhile, the latest guidelines of the President of the PPO of 9 January 2023 indicate a change in the PPO practice in this respect: they harmonize it with the EPO practice and also contain examples of model formulations of patent claims for computer-implemented inventions, including claims for a computer program.

The "General guidelines of the President of the PPO on inventions and utility models" were published in "Wiadomości Urzędu Patentowego" No. 2/2023 of 9 January 2023. As a rule, an invention of this type must be of a "technical nature", i.e. constitute a solution to a technical problem (and not, for example, an aesthetic, legal or tax problem) and have technical features. The possibility of patenting a computer program is discussed in point 2.8 of the cited guidelines of the President of the PPO.

In Poland, as in many other countries, the issue of patenting inventions generated by artificial intelligence (AI) is becoming increasingly important, but also controversial.

Doctrine indicates that the creator of an inventive project is a natural person who "invented" a specific solution. It is therefore about a person who created a certain new intellectual good that did not exist before. Therefore, under the current regulations, the right to obtain a patent belongs to the creator, who can only be a natural person. Only a "computer-implemented invention" (CII) can be patented, i.e. one in which the use of a computer produces a further, unexpected technical effect that solves a problem.

Patent protection is established by granting a patent for an invention after a materially examined patent application, which must be filed with the PPO. The requirements for obtaining a patent are regulated by the Industrial Property Law.

The application must contain the name of the applicant, a request for granting a patent, in which the invention is briefly and precisely named, and a description of the invention. In addition, the application must contain at least one patent claim, a summary of the description and should include drawings to which the claims refer, if they are necessary for understanding the invention.

The patent application is kept secret by the patent office for 18 months and then published. Substantive examination of the application - at this stage, the patentability of the solution is examined. The substantive examination may end with the issuance of a decision to grant an exclusive right, a decision to refuse to grant this right or a decision to discontinue the proceedings.

The PPO issues a decision on granting a patent if the statutory conditions for obtaining the right have been met. The right is granted subject to payment of a fee for the first protection period covering the first three years of protection.

The PPO proceedings can last up to a few years, regularly between two and four years.

Poland is a participant of the Global Patent Prosecution Highway (GPPH) program since 6 January 6, 2017.

Additionally, since July 1, 2013, Polish applicants may, under an agreement concluded between the PPO and the State Intellectual Property Office of the People's Republic of China (SIPO), benefit from an accelerated procedure for obtaining a patent in China, based on a corresponding Polish patent application.

The ordinary application fees should not exceed EUR 500.00 (the amount of the fees will depend on, among other things, the number of pages of the description, claims and drawings), and there are also annual fees from the 4th to the 20th patent year, usually from PLN 250 (approximately EUR 60) for the 4th patent year to PLN 1,550 (approximately EUR 360) for the 20th patent year. The amount of the official fee for the first protection period (1st, 2nd and 3rd year of protection) is PLN 480 (approximately EUR 115).

Patents are granted – regardless of the field of technology – for inventions that are new, involve an inventive step and and be industrially applicable. A patentable invention, as defined in this way, must be a solution of a technical nature.

The owner of the patent itself is entitled to use the patented invention within the scope of applicable law. The owner obtains an exclusive right from the patent and may prohibit third parties, without his/her consent, from using the invention in a commercial or professional manner, consisting of:

• producing, using, offering, introducing to the market, storing or warehousing products that are the subject of the invention, exporting or importing them for these purposes, or
• using the method that is the subject of the invention, as well as using, offering, introducing to the market, storing or warehousing products obtained directly by such a method, exporting or importing them for these purposes.

The right to obtain a patent belongs to the inventor, under the conditions specified in the Industrial Property Law (Article 11 of the Act) or, if the invention was created as a result of the inventor performing duties resulting from an employment relationship or another contract, the right to obtain a patent belongs to the employer or the ordering party, unless the parties have agreed otherwise. The applicant may be a natural person or a legal person.

A patent for an invention lasts twenty years from the date of filing an application for the invention with the PPO. The condition for the duration of the patent is the payment of periodic fees for the protection of inventions.

The supplementary protection right (SPC) for medicinal products and plant protection products is a separate protection title from the patent. The supplementary protection right provides legal protection for specific products manufactured according to the patented invention after the patent protection expires. The SPC is compensation for many years of research in order to introduce medicinal products and plant protection products to the market. The applicant may be the holder of the basic patent or their legal successor.

The procedure for granting the SPC is regulated, among others, by Regulation (EC) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products.

An application for granting the supplementary protection right must be filed within 6 months from the date of issuing the authorisation to introduce the product to the market or 6 months from the date of issuing the decision to grant the patent - in the case where the authorisation was issued before the patent was granted.

The additional protection right becomes effective at the end of the legally established period of validity of the basic patent and remains in force for a period equal to the period that elapsed between the date of filing the application for the basic patent and the date of issuing the first authorization to introduce the product to the market in Poland or another European Union country or in a member state of the European Free Trade Association (EFTA) - party to the agreement on the European Economic Area (depending on which is earlier), reduced by a period of five years. The period of validity of the certificate may not exceed 5 years. The period of protection may be extended by 6 months for pediatric medicinal products.

According to Article 11 of the Industrial Property Law, the right to obtain a patent for an invention belongs (subject to Article 11, paragraphs 2, 3 and 5 of the Act) to the creator; and co-creators jointly enjoy this right.

Co-creators of an invention are jointly entitled to obtain a patent.

A co-holder of a patent may, without the consent of the other co-holders, use an invention on his own account and bring claims for patent infringement. Where benefits are received from an invention by one co-holder, each of the other co-holders is entitled, unless a contract provides otherwise, to a relevant part of one quarter of these benefits after deducting outlays, commensurate to his interest in the patent.

The right to obtain a patent for an invention is transferable. Patents can be assigned via different types of agreements under Polish civil law. The transfer of the right to a patent to an entrepreneur may be payable (e.g. a sales contract ), and free of charge (e.g. donation agreement).

A patent transfer contract must be made in writing; otherwise, it will be null and void. Transfer of a patent becomes effective vis-à-vis third parties when the transfer is entered in the patent registry. The record of the assignment in the patent register has a declarative effect.

Acceptance by undertaking - if an invention is transferred for use, on the day it is provided in writing the right to obtain a patent passes to the undertaking provided that the undertaking accepts the invention for use and notifies the inventor thereof within 1 month unless the parties set a different time limit.

The patent holder may in a contract authorise (licence) another person to use his invention (licence contract).A licence contract must be made in writing; otherwise, it will be null and void.

In the licence contract use of an invention can be limited (limited licence). If the licence contract does not limit the extent of use of an invention, the licensee is entitled to use the invention to the same extent as the licensor (full licence).

A licence expires at the latest when the patent lapses. The parties may provide for a longer contract term as regards provisions other than the licence, covering in particular payable performances required to use the invention.

If the licence contract does not state that the invention can only be used in a specified manner, a licence being granted to one person does not rule out the possibility of a licence being granted to other persons and also the invention being used by the patent holder at the same time (non-exclusive licence).

The licence holder may grant a further licence (sub-licence) only with the consent of the patent holder; granting further sub-licences is not permitted.

Licences are, on an interested party's application, entered in the patent register. The holder of an exclusive licence entered in the register may on an equal footing with the patent holder bring claims for patent infringement unless the licence contract states otherwise.

Technical information. Unless the licence contract provides otherwise, the licensor is obliged to impart to the licensee any technical information and experience that it has at the time the licence contract is concluded as needed to use the invention.

Patent infringement occurs when a given patent is in force in the territory of Poland and when the solution introduced to this market falls within the scope of the patent claims without autorisation.

A direct patent infringement occurs if any of the below actions is taken in the course of trade (or professionally) within the territory of Poland:

• making, using, offering, marketing, storing, or warehousing products being the subject of the invention, exporting or importing them for these purposes; or
• applying the process that is the subject of the invention and using, offering, marketing, storing, or warehousing products obtained directly from that process, and exporting or importing them for these purposes.

Indirect patent infringement is a statutory form of patent infringement in some legal systems. However, in Polish patent law there is no statutory regulation regarding concept of an indirect patent infringement.

The theory of equivalents assumes that patent infringement is not only the implementation of all the features indicated in the patent claims (literal patent infringement), but also the use of equivalent features instead of one or more features directly expressed in the claims.

Polish law does not expressly regulate the doctrine of equivalents.

On December 10 2015 the Supreme Court (V CSK 149/15) addressed the issue of the doctrine of equivalents. In a judgment annulling a Warsaw Court of Appeal judgment, the Supreme Court formulated the general guidelines for an assessment of infringement under the doctrine of equivalents.

The comparative examination should consist of the following stages:

• determining the scope of the patent on the basis of the patent claims, description and drawings, taking into account the technical problem underlying the given invention and the essence of its solution, as well as the type (nature) of protected invention;
• determining the technical features of the disputed solution, including the technical problems underlying it and the essence of the entire disputed solution;
• determining which of the technical features of the disputed solution reflect in functional terms the solutions already existing in the prior state of the art (determining the closest state of the art for the disputed solution);
• comparing the established scope of the patent with the technical features of the disputed solution in order to verify which features of the protected solution have been reflected in the disputed solution in the form of their obvious equivalents;
• determining, in the event that the technical features (obvious equivalents) replicated in the disputed solution constitute the essence of the technical solution protected by the patent, whether these features could have been developed by a so-called expert in a given field without knowledge of the patent.

A patent is not infringed by:

1. using an invention relating to means of transport and parts or devices thereof that are in the Republic of Poland temporarily and also items that are in the Republic of Poland in transit;
2. using an invention for state purposes to the extent required, without exclusivity if required to prevent or remove threats to important state interests, particularly as regards public safety and order;
3. applying an invention for research and experimentation purposes in order to assess or analyse it or for teaching purposes;
4. using an invention to the extent required to perform activities that, pursuant to the law, are required to obtain registration or a permit, constituting a condition for marketing certain products in view of their purpose, particularly medicinal products;
5. making up a medicine in a pharmacy according to an individual medical prescription.

A patent holder whose patent has been infringed or a person entitled to do so under the law may demand that the patent infringer cease the infringement, as well as seek monetary remedies:

1. hand over any unlawfully obtained benefits and,
2. if the infringement is culpable, also repair damage:

• in accordance with general principles; or
• by paying a sum of money of an amount corresponding to the licence fee or other relevant remuneration that when claimed would have been due and payable to the holder for consenting to the invention being used.

When determining whether a patent has been infringed, the court may adjudicate, on the holder's request, that part or all of the judgment or information on the infringement be communicated to the public in the manner and scope specified by the court.

The court may order the person infringing the patent, on this persons' request, if the infringement is non-culpable, to pay an appropriate sum of money to the holder if ceasing the infringement or the judgement is disproportionately severe for the infringer and payment of the appropriate sum of money duly takes into account the holder's interests.

When determining whether a right has been infringed, the court may adjudicate, on the holder's request, on products owned by the infringer, unlawfully produced and marked, and on the means and materials used to produce or mark them. The court may in particular adjudicate that they be withdrawn from the market, that the holder be awarded on account of a sum of money awarded to him or that they be destroyed. When adjudicating the court will take into account the seriousness of the infringement and the interests of third parties.

Anyone may file an opposition against a legally binding decision on granting an exclusive right (within 6 months of the announcement of the granting of the right). If the entitled party considers the opposition to be justified, the PPO issues a decision to revoke the right and discontinue the proceedings. If the entitled party raises the objection that the opposition is unjustified or the entitled party does not respond to the opposition, the President of the PPO appoints an expert to consider the case, who conducts the proceedings in this respect.

As a result of filing an application to invalidate the right, contentious proceedings are initiated.

Unlike the application or registration proceedings, contentious proceedings are adversarial in nature, i.e. they concern at least two parties that are in dispute. In these proceedings, the PPO becomes a kind of "arbiter" resolving the dispute.

In Poland, patent infringement and patent invalidity proceedings are decided in separate proceedings.

In patent cases, the issuance of a preliminary injunction (PI) is principally possible, but quite seldom.

As a rule, the preliminary injunctions proceedings aim to quickly block violation of IP rights. An important element in this procedure is the surprise effect when court’s immediate examination of a motion is required or if the order is fully enforceable by the bailiff for example when the seizure of goods is granted.

In other cases there is an obligation to hear the infringer.

The court may grant an interim injunction before or during the main proceedings. The injunction decision can be appealed.

However, under the newly amended (July 2023) the motion for interim injunction will be dismissed if it was filed 6 months after the patent holder became aware of the violation. It may be problematic to determine the moment when this deadline starts to run.

Patent infringement can generally be classified as a crime: acting without the required consent of the patent owner by producing, using, offering, introducing into circulation, storing or warehousing products that are the subject of the invention, exporting or importing them for these purposes.

Pursuant to Article 303 Section 1 of the Industrial Property Law, whoever claims the authorship or misleads another person with respect to the authorship of another’s person inventive design or infringes rights of an inventor of an inventive design in another manner, shall be liable to a fine, a penalty of restriction of liberty or deprivation of liberty of up to one year.

The criminal liability is stricter if the perpetrator has a specific intent — if he or she commits an act mentioned in Article 303 Section 1 with the purpose of obtaining a financial or personal gain, they shall be liable to a fine, a penalty of restriction of liberty or deprivation of liberty of up to two years.

Different kinds of criminal offenses are addressed in Article 304 of the Industrial Property Law, which provides for a fine, a penalty of restriction of liberty or deprivation of liberty of up to two years in case of an unauthorized filing of another person’s invention with the aim to obtain a patent or preventing from obtaining of a patent in another manner.

The prosecution of the perpetrator of the offenses defined in Article 303 as well as Article 304 takes place upon the request of the victim (Article 310 Section 1).

The two main types of damages awarded in patent infringement actions are reasonable royalties and lost profits. (However, the Patent Act does not limit damages to certain types, and a judge can award other types of damages that may be appropriate under the facts of the case.) A reasonable royalty is the fair market value of a license that the infringer would have purchased from the patent owner, who would receive royalties for the use of the invention. A court might calculate the fair market value of a license for one infringing item and then multiply that value by the number of items that infringed.

Meanwhile, damages for lost profits compensate the patent owner for any money that they would have made if not for the infringement. Getting these damages requires showing that your business suffered losses because of the infringement. You might be able to prove that the invention distinguished your products from your competitor’s products, such that consumers choose your products because of the invention. If your competitor steals your invention, and more consumers start buying their products because your invention has improved them, you may be able to argue that those profits should have belonged to you.

A court commonly will consider expert testimony in determining the amount of reasonable royalties and lost profits. This is because judges likely will not be familiar with the industry in which the patent owner and the infringer operate. They also may not be aware of the market value for a certain product or process.

The limitation period for bringing a patent right infringement is three years. The limitation period starts to run from the date on which the patent holder becomes aware that its rights have been infringed and by whom; this applies separately to each instance of infringement. Notwithstanding, a claim becomes ultimately time barred five years after the date of infringement of the patent.

The length of patent proceedings can last on average from 18 months to four/five years.

Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning the enforcement of intellectual property rights by customs authorities and repealing Council Regulation (EC) No 1383/2003 provides for the following customs procedures for the action of customs authorities when detaining goods in the event of a suspected infringement of intellectual property rights:

1. action "upon request": national or EU,
2. action "ex officio",
3. destruction of goods in small consignments.

Strengthened IP enforcement, including improved cooperation with EU institutions, the introduction of specialized IP courts, and a general push for more efficient and robust protection of patents.

These reforms are part of Poland’s ongoing efforts to create a more favorable environment for innovation, protect intellectual property rights, and position itself as a competitive hub for technology and industry in Europe and beyond.

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