Poland: Patent Litigation

The Polish judicial system has been significantly modified as of 1 July 2020. The Act of 13 February 2020 amending the Code of Civil Procedure and other acts established five specialised IP courts. These courts are located in Warsaw, Poznań, Gdańsk, Lublin, and Katowice. Two appeal courts sit in Warsaw and Poznań. The specialised IP courts have exclusive jurisdiction over:

• the protection of copyright and related rights, industrial property rights, and rights in intangible goods,
• preventing and combating unfair competition,
• the protection of personal rights in cases involving the use of goods for individualisation, advertising, or promotion of an entrepreneur, goods, or services,
• the protection of personal interests in connection with scientific or inventive activities.

The new rules also broaden the powers of patent attorneys by expressly allowing them to represent clients in copyright cases. The professional representation is mandatory except in cases where the value of the claims does not exceed 20,000 PLN. The IP Court in Warsaw has exclusive jurisdiction over matters concerning computer programs, inventions, utility models, topographies of integrated circuits, plant varieties, and company trade secrets (of technical nature). The Court does not have jurisdiction over patent invalidation matters, which means that the Polish Patent Office will still deal with the invalidation of patents. The new legislation implements the IP Enforcement EU Directive by introducing several procedural instruments that facilitate the pursuit of claims to ensure effective means of presenting, obtaining, and preserving evidence and provides guarantees for the protection of confidential information. The courts can now order access, where appropriate, to banking, financial or commercial documents. The amendment also introduces improvements of provisional measures for: the immediate termination of infringements, obtaining relevant information necessary to seek redress.

The above-mentioned amendment, long-awaited by all entrepreneurs, represents a significant challenge for the Polish judicial system, as it implies the need to appoint judges with expertise in the IP field and the concentration of IP cases in five courts. Parties and representatives need to adjust to the new jurisdictional rules. The authors expect these rules to improve significantly the timing and manner of dealing with IP matters, and to create a friendly environment for consistent and high-quality case law enabling entrepreneurs to anticipate the consequences of their actions in the local market, especially regarding the enforcement of infringement cases.

During the past year we have also experienced quite significant changes deriving from the implementation of temporary procedural rules related to conducting patent cases in courts. The cases have speeded up, the hearings are conducted by electronic means as a basic rule. The courts increasingly tend to apply interim measures to stop the infringements for the time the proceedings take place.

Polish legal system does not provide for a combined patent invalidity and infringement action, each requiring institution of independent proceedings before the Polish Patent Office and a civil court respectively. Accordingly, issues of the patent claim construction and the resulting scope of protection (which may constitute a basis for invalidation) are considered in the proceedings before the Patent Office, and infringement/liability claims (including damages and those of prohibiting nature) are considered in a separate procedure before a common court. Patent invalidity proceedings are instituted upon a written application where the applicant is obliged to indicate legal bases for invalidation, these being: a failure to satisfy the prerequisites for obtaining patent protection, a failure to present the invention in a sufficiently clear and exhaustive manner for a person skilled in the art to implement it, the patent has been granted for the invention not covered by the content of the application, the patent claims do not define the subject matter of the claimed protection in a clear and concise manner or are not fully supported by the description of the invention. The Act amending the Industrial Property Law and Act on Litigation Costs of 16 October 2019, which entered into force on 27 February 2020, has removed the requirement to prove a legal interest in the patent invalidation. Therefore, a party bringing invalidation proceedings no longer needs to specify why it has an interest in invalidating a particular patent. The applicant may request invalidation of a patent in whole or in part. Patent invalidation proceedings are inter partes proceedings where both parties present their argumentation and evidence in support, and the case is examined during hearings scheduled by the Patent Office which may be attended both by the parties and/or their representatives. The decision of the Patent Office is final at first instance, however, its legality is subject to control by the supervising administrative courts. Appellate proceedings start with filing a complaint with the District Administrative Court (second instance), whose decision may subsequently be appealed against with the Supreme Administrative Court (third instance).

Patent invalidation proceedings before the Polish Patent Office generally take 1 – 3 years. Interestingly, in the course of the invalidation proceedings the holder may request patent limitation by submitting a modified version of patent claims. Nonetheless, until a final decision limiting the scope of patent protection is issued, the original wording of the patent claims will remain binding on both the Patent Office and the court (in infringement proceedings). The discussions pertained to the possibility of jointly recognizing the litigation and amendment proceedings by the Office, instead of suspending the contentious proceedings. Even though the law allows for such a course of action (just like before the EPO), the Office is not willing to apply these new rules.

Patent infringement action, in turn, is filed with a common court, the only body competent to deal with patent infringement cases newly established as an IP Court in Warsaw. In the IP Court the claimant starts court proceedings by bringing a claim containing all the statements and claims related to the circumstances of the patent infringement. The claimant must submit evidence in support of their claim. The defendant can respond to the statements and lodge evidence in support. Following the exchange of the initial written statements, the parties can exceptionally present further arguments in subsequent pleadings, provided they were not in a position to file such evidence with the claim or in the response to the claim. The court will hear both sides’ motions as to the evidence provided and issue a decision as to which of the submitted evidence will be admitted. A witness can be heard orally. Witness statements are now allowed only in exceptional cases, when the court has reviewed all other materials and has doubts as to some crucial facts regarding the merit of the case. After the law amendments, witness evidence can be brought by way of written statements. Expert evidence must be produced either in writing or orally during the hearing, when explicitly approved by the court. When the evidence has been heard, the court will close the case and issue a verdict. Patent infringement proceedings before the first instance court last, on average, from 1.5 to 3.5 years.

First instance decisions in both patent invalidation and patent infringement procedures can be subject to appeal by either party. In the case of decisions issued by the Patent Office in patent invalidation proceedings, an appeal must be filed with the District Administrative Court within 30 days from the date of service of the decision with its justification. The appeal must clearly state the allegations as to the errors/shortcomings (of formal and/or substantive nature) that occurred in the course of the case examination by the Patent Office, which may then be contested by the other party in a response to the appeal. Generally one hearing is held at second instance with both parties and/or their representatives attending. However, we can observe that under the Covid regime the Administrative Court takes advantage of the opportunity to conduct closed sessions instead of oral hearings. We are of the opinion that this legal option is now being treated as a rule rather than an exception, to noticeable detriment of the parties unable to present their case orally before the court.

No evidence proceedings are conducted, except for the possibility of admitting supplementary documentary evidence, on exceptional basis. Based on the documents filed in the proceedings before the Patent Office, argumentation of the parties in the appeal and response to the appeal, the District Administrative Court settles on the issue of legality of the first instance decision, i.e. whether it was made in compliance with the law in force, and issues a judgment either dismissing the appeal and thus upholding the decision of the Patent Office, or repealing the decision and remitting the case for reconsideration by the Patent Office.

The judgement of the District Administrative Court may be subject to appeal with the Supreme Administrative Court (third instance) within 30 days of its service along with a justification. The other party may again file a response contesting the theses and argumentation presented by the appellant. The appeal is examined during a hearing (one in general) with participation of the parties and/or their representative, and the Supreme Administrative Court decides on whether the judgment of the lower instance is correct. No evidence is taken at third instance proceedings. The Supreme Administrative Court may dismiss the appeal where it is considered groundless (the judgment of the lower instance becomes then final) or repeal the judgement of the District Administrative Court and 1) remit the case for reconsideration by this court or, 2) where appropriate/grounded, examine itself the merits of the first appeal against the decision of the Patent Office. Appellate proceedings before administrative courts take approximately a year at each instance. Since the Covid regime has entered into force and no oral hearings have been conducted, we can observe much quicker verdicts being issued by the courts.

In the case of civil court proceedings for patent infringement, the law in force provides for a two-instance appellate procedure (the Court of Appeal and the Supreme Court), however, with some restrictions on the admissibility of the second instance appeal. Any appeal (on objections of fact or law) against the judgment of the IP Court must be lodged with the Court of Appeal within 14 days of service of the judgment with a justification. The court then delivers the appeal to the other party, who has 14 days to file a response to the objections raised. The Court of Appeal can carry out a limited evidence procedure, provided that the applicant can show they were unable to file motions as to evidence in the first instance proceedings before the IP Court. If the value of the claim is not lower than PLN 50,000, the judgement of the Court of Appeal may be subject to a final appeal with the Supreme Court (the so-called appeal for cassation) within two months of receipt of the lower instance judgement with a justification. This final appeal may be based on the charge of substantive law infringement through its incorrect interpretation or application, or on the charge of procedural provisions infringement, if such failure could have had a significant effect on the outcome of the case. Just as the lower instance, the Supreme Court delivers the final appeal to the other party who has a fixed two-week deadline (counted from the date of service) to file a response. The Supreme Court decides first whether the final appeal may be accepted for substantial examination, assessing whether any of the prerequisites for filing this final appeal are satisfied, i.e. whether the case does concern an important legal issue, there is a need to interpret legal provisions, invalidity of the legal proceedings or whether the final appeal is manifestly well founded. Where none of these prerequisites are deemed to occur, the Supreme Court decides to refuse to accept the final appeal for substantial examination. Otherwise, the case is considered as to the merits at a closed session, unless the case concerns an important legal issue and the applicant petitioned the Court to have it examined at a hearing. Evidence proceedings are not admissible at the final instance. When the Supreme Court finds the final appeal groundless, it renders the final judgement on its dismissal, and when the appeal is upheld, the appealed judgment of the lower instance is repealed either in whole or in part and the case is remitted to the Court of Appeal for reconsideration. Court decisions on interim injunction, in turn, are issued in the form of court orders and can be complained against with the same IP court within seven days from the date of receipt. It is possible to challenge both the actual circumstances of the case and objections claiming erroneous interpretation or application of legal provisions. The complaint is delivered to the other party who can address the objections raised in it and file a response, and the court renders a decision during a closed session without the participation of the parties.

Under the amended Industrial Property Law a patent infringement is any event of using the patented invention without the consent of the patent holder for profit or professional purposes, including manufacturing, using, offering, putting on the market, or importing products which are the subject matter of the invention, and also storing, warehousing, and exporting them.

The Polish intellectual property law does not precisely define the concept of contributory or indirect patent infringement. However, the latter is generally understood as an act enabling a third party to infringe exclusive rights, for example, distributing devices for carrying out a protected method. The issue of multiparty patent infringement is also not particularly defined by the law. Nevertheless, joint infringement is possible if each party practices only a part of the patent claim. We have not seen any recognized case law on this particular aspect. The principle has therefore not yet been decided, whereas legal practitioners differ as to the allowance of such actions before courts.

Patent infringement occurs when an infringer’s actions are within the scope of exclusive rights of a granted patent (Article 63(2), Law on Industrial Property). The description of the invention and the drawings can be used to construe the patent claim. Therefore, a literal interpretation of the claim defines the scope of protection resulting from the patent. National law does not explicitly provide for a doctrine of equivalents to define the scope of protection of a patent. However, the Munich EPC Act, which has been ratified by Poland, provides grounds for the applicability of the doctrine of equivalents to eliminate discrepancies in the manner in which the scope of patent protection is evaluated. In practice, Polish courts already apply the doctrine of equivalents with regard to domestic patents and this has been accepted by the Supreme Court. There is no significant jurisprudence covering this aspect. The recently amended Industrial Property Law includes a new definition of patent infringement. A patent holder can prohibit a third party from using the invention in a profitable or professional manner without their consent, that is, from manufacturing, using, offering, marketing, storing or warehousing the patented product, or exporting or importing such a product for these purposes. This applies both to patented products and methods for obtaining such products.

Possible defences depend on each particular case. The most common defences include challenging the actual allegations of the infringement. This can include stating that the claimant failed to submit proper evidence in support of the objections raised and earlier use of the subject matter of the patent. A person who uses an invention with goodwill in Poland before the priority of the patent has been determined can still use it free of charge in their enterprise in the same way they have always used it (Article 71(1), Law on Industrial Property). We can also claim the exhaustion of rights. It is not an infringement to import into Poland, offer, market and manufacture a product, or use the method of an invention which has already been marketed in the European Economic Area territory by the patentee or with their consent (Article 70(2), Law on Industrial Property).

There are more cases heard regarding the declarations of non-infringement. This requires showing that the product used by the alleged infringer does not incorporate features protected by the patent, according to literal interpretation of the claims and under the doctrine of equivalents.

As far as the expiration of protection is concerned, the claimant must prove that the patent is valid. In the absence of evidence submitted in support of an up-to-date extension of relevant protection, the court can decide that the patent is no longer valid on the decision date and can dismiss the suit.

Invalidation of the patent. Invalidation proceedings must be initiated before the Patent Office. The invalidation may not be brought as a counterclaim in the court. Infringement proceedings and invalidation proceedings can start at the same time. However, in practice, it is rare for a court to suspend infringement proceedings to await the outcome of invalidation proceedings (Article 316, Code of Civil Procedure). We are of the opinion that the case law may change due to the law amendments obliging the court to suspend trademark infringement proceedings when the trademark has been questioned before the Patent Office. So far, however, we have observed that unless invalidation proceedings have been completed before the court proceedings, the court l would issue a decision based on the assumption that the patent is still in force.

Expiry of the limitation period. Patent infringement claims expire after three years. The limitation period starts running on the day when the patent holder becomes aware of the infringement and of the person who has infringed the patent, separately for each infringement. However, the claim is barred five years after the date on which the patent was infringed (Article 289, Law on Industrial Property). The provisions regarding interruption and suspension of limitation periods apply. The limitation period is suspended between the filing of the patent application and the granting of the patent (Article 289 (1)(2), Law on Industrial Property). Protective writ. Although Polish law is silent as to whether a potential defendant can file a protective writ when a party acquires knowledge about a motion for interim injunction (for example, after receiving a warning letter), said party can file a writ presenting their case and the court may (but does not have to) take it into consideration when deciding on the interim injunction.

A patent can be invalidated in its entirety or in part, if: the conditions to obtain a patent have not been met (that is, the invention lacks novelty, inventiveness, or industrial applicability); the invention has not been described clearly and exhaustively enough for it to be carried out by a person skilled in the art; the patent has been granted for an invention not covered by the scope of the application or the original application; the patent claims do not specify the subject of the protection sought in a clear and concise manner or are not entirely supported by the description of the invention. (Article 89, Law on Industrial Property.) The burden of proof is on the party seeking invalidation.

When examining the premise of novelty, the Polish Patent Office follows the principle of absolute novelty. An invention is deemed new only if it is not part of the prior art. Prior art constitutes everything that has been made available to the public in a written or oral form, by usage, display, or disclosure in any other way before the date according to which priority is determined. Prior art also comprises the content of patent applications or utility models that benefit from earlier priorities and have not been made available to the public, provided that they have been published according to the manner specified by the Industrial Property Law. Polish regulations do not exclude the possibility of granting a patent if the invention was made available no earlier than 6 months prior to the application date and the disclosure was an obvious abuse in relation to the applicant or their legal predecessor.

The amended Industrial Property Law allows a patent to be limited during litigation proceedings, provided that the patent holder applies for limitation either: during opposition proceedings, before the response to the opposition is delivered; during patent invalidation proceedings, before the hearing. After applying for the limitation, the President of the Polish Patent Office appoints an expert to examine the application. The experts can also examine the application in adjudicating teams. Before issuing its decision, the Patent Office can request the patent holder to submit explanations and specific amendments and supplements to the patent description, within a specified period, which are indispensable to continue the proceedings. In the case when the motion has a direct effect on the examination of the opposition or patent invalidation claim, filing of the motion for limitation suspends any opposition or patent invalidation proceedings. The Patent Office can also decide, at the request of either party, to jointly examine the application for patent limitation with the pending opposition or patent invalidation proceedings. We have not yet however observed the willingness of the Patent Office to run both proceedings jointly. It is also possible to limit the scope of protection at any time by lodging a statement on the waiver of protection. The motion has to be registered at the Registry Department of the Patent Office.

The regular patent protection period is 20 years and for two types of solutions – pharmaceutical or plant protection products that require a marketing authorization – this period can be extended by up to five years by virtue of a supplementary protection certificate (SPC). Further 6 months extension can be granted for pediatric medicinal products for which data has been submitted according to the Pediatric Investigation Plan.

The duration of the SPC for medicinal products cannot exceed five and a half years, whereas the duration of the SPC for plant protection products cannot exceed five years.

The evidence in patent litigation proceedings according to the Code of Civil Procedure consists of: Documents Court expert opinions Testimony of witnesses/written affidavits Inspection of apparatus and premises. The documents do not have to be originals, but copies must be confirmed and stamped by a professional representative. As a rule, witness evidence is given orally in hearings. However, the court can allow the witness to give evidence in writing. Witnesses can be cross-examined. In the cases heard under the economic procedure, witness evidence can only be admitted by the court if there are still unexplained facts relevant to the resolution of the case after other means of evidence have been exhausted.

A court-appointed independent expert provides a substantial part of the evidence for patent infringement proceedings. The purpose of this evidence is to: provide the court with technical information about the patent; enable the court to determine the scope of protection of the patent; enable the court to assess whether there is a patent infringement or not. Expert evidence can be given by a person who is skilled in the relevant field of art or by a board of specialists employed by a scientific research centre. Experts can be heard by the court and then questioned by the parties. If the expert opinion is challenged, the parties can apply for the admission of evidence from another expert.

The parties can submit expert opinions commissioned privately, but this evidence will be treated as the party’s statement and not as expert evidence.

The patent holder can apply to obtain evidence. The court preserves evidence at the request of the entitled party who substantiated the claim, as well as the legal interest in the security. The legal interest in securing evidence exists when the lack of the requested security makes it impossible or seriously difficult to provide or prove essential facts, as well as when there is a risk of destroying evidence or a delay in obtaining evidence may prevent or seriously hinder the achievement of the purpose of taking evidence, or for other reasons, there is a need to state the existing state of affairs. The motion is heard in a closed session, without the parties participating. In complex cases, the court can make its order conditional on the applicant providing security. The parties can lodge a complaint against the decision securing evidence within seven days of the date of the decision.

According to the contents of Art. 64 of the Industrial Property Law, a patent granted for a manufacturing process covers also products directly obtained by means of that process. In the case of new products, or when the right holder proves that he was unable – despite taking reasonable efforts – to identify the process of manufacture actually used by another person, the product which may be obtained by means of the patented process will be deemed to have been obtained by that process. In such a case, in the taking of evidence to the contrary, the defendants’ legitimate interests in protecting their manufacturing and business secrets should be taken into account.

Under the law in force, in justified cases, also when information or evidence constituting a trade secret is to be presented during a hearing, hearings can be held at closed sessions. This general rule is applicable both in the course of patent infringement proceedings before IP Courts and patent invalidation proceedings before the Polish Patent Office. Additionally, IP courts are also bound by specific regulations relating to the protection of business secrets, these being: in the case of proceedings to secure evidence – upon delivering the order to secure evidence, the court instructs the parties, as well as the expert, on the protection of business secrets; where the order is subject to complaint, the court, with regard to the complaint, sets out separate rules as to using the secured evidence and studying it by the holder, and may introduce some additional restrictions; in the case of proceedings for the disclosure or release of evidence – acknowledging the request, the court instructs the parties on the protection of business secrets; where the defendant calls upon the protection of business secrets, the court may set out separate rules as to using the secured evidence and studying it, as well as possibly introduce some additional restrictions; in the case of proceedings for the disclosure of information – when the order to give information is subject to a complaint based on the protection of a business secret, the court may set out separate rules as to using the secured evidence and studying it, as well as possibly introduce some additional restrictions;

According to the Industrial Property Law [Article 246], any person may give reasoned notice of opposition to the final decision of the Patent Office on the granting of a patent within six months from the publication of the mention on the granting of the patent in the ‘Patent Office News’. The grounds for opposition may be the same as the grounds for invalidation. The Patent Office informs the patent holder about the opposition and invites them to file their observations within a fixed time limit. If the patent holder claims the opposition to be unjustified, the case will be examined by the patent Office expert assigned to the case. No regular litigation proceedings are now conducted in the opposition cases, even though the law provides for such possibility.

Polish courts are not bound by decisions or judgments issued in the course of proceedings in other jurisdictions. These, however, may be submitted to strengthen the arguments presented in the course of the proceedings. The above general rule, however, is modified to some extent in relation to European patents. A decision on patent invalidation issued by the EPO will be binding for the Polish Patent Office, however, it will not result in the automatic invalidation of the patent validated in Poland, this still involving the necessity to carry out a regular invalidation procedure. The PPO now tends to suspend Polish proceedings untli the EPO proceedings have been concluded. This rule applies only to those patents which have been validated in Poland, therefore there is a direct interdependence between those proceedings.

In cases involving an international or cross-border element, the courts have jurisdiction in accordance with the relevant international agreements or EU law, including for example the Rome I (593/2008) and Rome II (864/2007) Regulations, and the Recast Brussels Regulation (1215/2012). Under Rome II, the parties cannot choose the law applicable to disputes relating to the infringement of intellectual property rights which must be governed by the law of the country in which protection is claimed (Article 8, Rome II). This rule is justified by the need to protect third parties and is in line with the principle of territorialism. The International Private Law (IPL) also regulates the law governing private law relationships linked to more than one country. The IPL contains basic rules regarding IP matters, and provides that the establishment, substance and expiry of intellectual property rights are governed by the law of the state in which the rights are enforced. The same rule applies to the transfer and priority of IP rights. The protection of intellectual property rights is governed by the law of the state where protection is claimed. When an international agreement or EU law sets out a special procedure for the granting of IP protection, any matters that are not regulated in these instruments or are left to the national authorities discretion are governed according to the IPL. Additionally, the Polish Code of Civil Proceedings provides that foreign court judgments in civil matters are recognised under the law (ex officio), unless otherwise provided in the Code. Poland is not a party to the UPC Agreement.

In the case of patent infringement claims brought before local courts, the court can order the parties to attempt to settle their claim by mediation within a time limit fixed by the court. If the parties do not reach an agreement within the time specified, the case will be referred back to the court. Patent disputes can be brought before the Arbitration Court but the parties must apply to the Court of Conciliation first. It is not common to settle patent infringement cases in this way. The invalidation cases can also be settled by mediation.

Polish procedure provides for the necessity to make an attempt at resolving the dispute amicably prior to filing a civil court action. It is a common practice then to send a notice to a potential infringer, e.g. a cease and desist letter, demanding a good-will cessation of the infringement within a fixed time limit (this customarily being a 14-day or a one-month deadline). Alternatively, the case may be referred to out-of-court mediation with the participation of a mediator, and – if the infringer consents to out-of-court mediation – the case may be concluded in this manner. Under this procedural requirement, on commencing court action, a proof of amicable attempt (i.e. either correspondence exchanged between the parties or the minutes from the mediation meeting showing that the parties did not reach a settlement) must be filed along with the statement of claims and evidentiary support for the infringement. If, however, patent protection is to be enforced under criminal law, a proof of amicable attempt is not compulsory. The law in force does not define any time limit for commencing IP rights/patent infringement actions. A certain determinant in this respect, however, is the provisions relating to the limitation of claims under which the claims resulting from the patent infringement will be time-barred after 3 years. The limitation period starts on the day on which the rightsholder learned about the infringement and about the entity infringing the patent, separately for each single infringement. Nonetheless, in any event, the patent infringement claim will be time-barred after five years from the date on which the infringement occurred.

An exclusive licensee can sue for a patent infringement unless the license agreement provides otherwise. To do so, they must register an exclusive license agreement in the Patent Office. A non-exclusive licensee and distributor cannot bring patent infringement claims except for a distributor who is an exclusive licensee (with the same restrictions as above).

Recent amendments to the Polish IPL [Article 89(1] have removed the requirement for the person applying for the invalidation of a patent to have a legitimate interest in this action. This requirement has been key to many patent disputes heard before the Patent Office of the Republic of Poland, obliging entrepreneurs to prove that their business is at least competitive to that of the current patent holder. The absence of this condition for filing patent invalidation requests should considerably facilitate and accelerate proceedings in the cases regarding the revocation of industrial property rights (as is now the case in the trade mark-related proceedings).

Two types of preliminary injunctions are available under Polish law: an injunction to settle reciprocal relations between the parties for the duration of the proceedings, for example a ban on offering the suspected product for the time of the proceedings; an injunction permitting one party to obtain information necessary to enforce the claims (see Question 28, Other mechanisms). Motions for interim injunctions can be filed before or at the same time as infringement proceedings are initiated. If the motion is filed before the proceedings are brought, the court must set a time limit within which the main proceedings must be commenced. This period cannot be shorter than two weeks nor longer than one month. The injunction will expire if the proceedings have not been brought within this deadline. The conditions for an interim injunction are as follows: evidence that there is high probability of the patent having been infringed; justification of the claims raised, resulting from the alleged infringement; existence of a legal interest in seeking the injunction (for example, a risk that continuing infringing practice will have irreversible effects on the claimant’s assets, a risk that evidence will be destroyed, or that a delay in obtaining evidence will hinder the claimant’s case); urgency. A decision can be challenged within seven days by lodging a complaint with the Court of Appeal. When an order preserving the evidence is granted prior to the commencement of proceedings, the main proceedings must be commenced in Poland, so that the court is unlikely to have powers to grant a preliminary injunction in support of the main proceedings in a foreign jurisdiction.

The court can prohibit actions that infringe the patent, such as the professional or commercial use of the invention protected by the patent. This includes: manufacturing a patented product; using the product or a method consisting of the subject matter of the invention; marketing or importing a product constituting the subject matter of the invention; offering, marketing, or importing products obtained directly from the patented method. Monetary remedies include: delivering up profits; compensating damages, in the case of wilful patent infringement based on the Civil Code; paying the sum of money corresponding to a licence fee or another suitable remuneration that would be payable for the patent holder’s consent to use the invention. The court can order the destruction of the infringing products, means, and materials in the infringer’s possession, or used by them. The court can also order the publication or notification of the court decision. When judging on the infringement case, the court can, at the patent holder’s request, decide to dispose of unlawfully manufactured or marked products and the means used in their manufacturing when owned by the infringer.

Polish legal system provides for two kinds of financial claims in patent infringement litigations: a claim for payment of damages and a claim to surrender unlawfully obtained profits, both involving the necessity to evidence the amounts claimed. In the case of damage claims, the claimant must demonstrate the actual damage to the property they have suffered as a result or in connection with the patent infringement or demonstrate the amount of the lost profits that would have been earned had the defendant not infringed their patent. The amount of unlawfully obtained profits, in turn, is defined as the profit obtained by the defendant as a result of using the patented invention. Both kinds of financial claims must be supported with relevant evidence, including, inter alia, expert opinions in the field of finance and accounting.

A patent holder whose rights have been infringed may demand from the infringer 1) to cease the infringement, 2) to surrender the unlawfully obtained profits and 3) in the event of a culpable infringement, also to redress the damage either by paying the sum of money in the amount corresponding to the license fee or another reasonable compensation, which – while being vindicated – would have been due on account of consent given by the patent holder to exploit their invention. There are no strict rules on what percentage of the licence fee would be relevant in general, the court tends to refer to the peculiarities of the relevant market. The claimant needs to prove the practice in such area. When judging on the infringement, the court may – upon the rightsholder’s request – decide also to publish the judgement or the mention of the judgement. It is a common practice to pursue in a patent infringement process either only prohibitive claims or both prohibitive and pecuniary claims. When considering claims of both types, the court is guided primarily by the circumstances of the case and the assessment of whether or not the patent has been infringed and whether the damage suffered by the patent holder has been correctly evidenced. The court does not tend to refer to the public interest clause when ordering the injunction. Only in the case of personal rights protection the prohibition of publication may only take place when it is not contrary to public interest.

The principle of proportionality must be kept, in order not to burden the infringer too much. There is a general rule that the injunction may not aim at satisfying the claim, unless the law provides otherwise. This exception does not apply if the injunction is necessary to ward off imminent damage or other adverse effects on the patent owner.

The most popular – and most readily accepted by the court – claims in patent infringement proceedings are prohibitive claims (such as prohibition to market products that are the subject matter of the invention or use the method being the subject of the invention, as well as to offer or market products obtained directly by this method) and claims to surrender unlawfully obtained profits. However, the situation is different in the case of unintentional infringements. The court may then, at the request of the person infringing the patent, order that person to pay the holder an adequate amount of money, should the cessation of the infringement be excessively severe on the infringing person and if the payment of the adequate sum of money properly meets the interests of the holder. When deciding on patent infringement, the court is primarily guided by the assessment of whether or not patent infringement indeed occurs. Polish case law actually lacks judgments in which the court – having found that the patent infringement did occur – instead of ruling the prohibition of further infringements, would award the patent holder an amount equivalent to the value of the license fees for using the patent. This is dictated, inter alia, by the fact that this type of compensation is restricted in Polish legislation only to the cases of non-culpable infringements (which are rather infrequent) with simultaneous satisfaction of the remaining prerequisites (the prohibition would be disproportionately severe on the infringer and the payment of the appropriate amount would take into account the interests of the patent owner). Determination of the amount is then left to the judgment of the court with consideration to the circumstances of the case.

Based on the provisions put in force as of July 2020 it is possible to bring an action to establish whether the activities taken – or intended to be taken – by the claimant do not infringe another party’s patent. The claimant, however, is obliged to evidence that they have a legal interest in such a claim.

The first instance court fee depends on the type of case. Generally, in matters relating to inventions, including European intellectual property rights, a fixed or relative fee is charged. In monetary claims relating to property rights, a fixed fee is collected according to the value of the object of the dispute or appeal, as follows: up to PLN 500: PLN30; over PLN 500 up to PLN1,500: PLN100; over PLN1,500 up to PLN4,000: PLN200; over PLN4,000 up to PLN7,500: PLN 400; over PLN 7,500 up to PLN10,000: PLN500; over PLN10,000 up to PLN15,000: PLN750; over PLN15,000 up to PLN20,000: PLN1,000; over PLN20,000: 5% of the value of the object of the dispute or appeal, subject to a maximum of PLN200,000. For non-monetary claims, a fixed fee of PLN300 is charged. Additionally, an application to secure evidence or an order to provide information is subject to the payment of a fixed fee of PLN200. In turn, in the case of appeals in patent infringement cases, the court fee is fixed at 5% of the value of the subject matter of the appeal.

Attorneys’ fees and costs of proceedings are recoverable to some extent from the losing party. The costs should reflect genuine expenses incurred (the list should be submitted by the party) or be awarded according to the prescribed norms. Attorneys’ fees are capped in the corresponding cost regulations. Alternatively, the party may demand recovery of the expenses once these have been officially documented.

In Poland, patent infringement court actions are not very popular because of both the costs and duration of such proceedings, which means that their number is not significant. In many cases, patent infringement disputes are settled amicably either by the parties directly or in the course of mediation, court litigations being actually the last resort. Despite such specificity, pharmaceutical, chemical and biotechnological sectors show the largest growth in the number of patent litigations, keeping in mind that the growth in the pharmaceutical sector is primarily due to a relatively big number of generic pharmaceutical companies. Recently, we have observed a large amount of new cases where the authors demand a refund of the remuneration received by the patent owners.

The recent establishment of specialised IP courts and new procedural regulations will certainly entail a number of interpretation doubts, requiring the interpretation of certain provisions and development of judicial practice. This particularly concerns the proceedings on patent limitation as well as declaratory actions for non-infringement.

In 2019 the Polish Industrial Property Law was amended in terms of prerequisites for obtaining and maintaining protection for all kinds of industrial property rights. 2020, in turn, saw the establishment of specialised IP courts and the change in procedural regulations. As the reforms have only been introduced recently, it is now time to gain experience on how these changes function in practice and whether or not any further reforms are necessary/advisable in our jurisdiction. The Covid regime has enforced significant changes in terms of the number of new cases being brought to courts; it seems that it has decreased for now. Since the IP courts are relatively new to the Polish system, we have not yet seen any significant case law decisions that would affect what we have experienced to date.

Undoubtedly, continuation of the works related to the development of a unitary patent.