New tools: patent enforcement proceedings in Poland

Polish patent enforcement proceedings are principally based on the Industrial Property Law of June 30, 2000, effective from August 22, 2001 with further amendments, and the Civil Code and Code of Civil Proceedings. The Council Regulation (WE) No. 1383, dated July 22, 2003, determines the actions of customs authorities against the goods deemed to be infringing some IP rights, as well as measures to be taken by customs authorities in respect of such goods.

The holder of a patent issued by the Polish Patent Office and the holder of European patent in which Poland was designated, and which is effective in Poland, generally enjoy the same rights.

Their rights are effective in the whole territory of the country on the same range and scope. According to Article 63 of the Polish Industrial Property Law, a patent shall confer the exclusive right to exploit the invention, for profit or for professional purposes, throughout the territory of the Republic of Poland.

The scope of protection is determined by the claims contained in the patent specification. As to the patent granted for a process of manufacture, this right also covers products directly obtained by means of that process.

On the other hand, a patent granted for an invention relating to the use of a substance comprised in the state of the art for the purpose of obtaining a product eligible for a new use, also covers products specifically prepared for such use by means of that invention.

"The second instrument (which also should be useful for patent holders, particualarly in small infringement cases) is a special procedure for the destruction of goods in small consignments."

In obtaining its exclusive rights, the patent holder is entitled to prevent any third party from exploiting his invention for profit or for professional purposes by way of:

•  Making, using, offering, or putting on the market a product that is the subject matter of the invention, or importing the product for such purposes; or

•  Employing a process that is the subject matter of the invention, as well as using, offering, putting on the market or importing for such purposes the product directly obtained by that process.

Enforcement options

A patent holder seeking enforcement of its rights in Poland can generally choose between starting civil proceedings before the court or using border measures as a support.

In Poland there are no specialist patent courts. In civil proceedings referring to patent infringement, the owner of exclusive right may seek a preliminary injunction before commencement of trial as well during the trial. The request for imposing such an injunction must be filed with the court together with the evidence of, among others, the fact that the infringement was committed.

Common civil courts tasked with patent infringement matters are not specially prepared for these kinds of cases and unfortunately the judges adjudicating have no technical training. They can be supported by independent experts who are designated from the official court list of experts. On the other hand, in civil proceedings regarding patent infringement, generally all evidence must be indicated and produced by the plaintiff.

In the case of new products, or where the right holder proves that he was unable through 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 is presumed to have been obtained by that process. As a rule, the court does not take evidence ex officio. In consequence, preparing strong evidence is crucial for the whole court strategy and its effectiveness.

Claims for infringement of a patent are enforceable after the grant of the patent. Where the infringing person has acted in good faith, claims for the infringement of a patent are enforceable in respect of the period beginning on the day following the date of publication by the patent office of the patent application, and in case of the infringing person being earlier notified by the holder on the filing of the patent application, from the date of notice.

If infringement is proved, a patent holder may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits, and in cases of infringement caused by fault, also to redress the damage in accordance with the general principles of law or to pay an adequate amount of money.

Additionally, when judging on the infringement of a patent the court may, at the holder’s request, decide on publishing the judgment in full or in part, or the mention of the judgment, in a manner as specified by the court.

The granted period of prescription for claims for infringement of the patent is three years. The period concerned runs separately in respect of each individual infringement, from the date where the right holder has learned about the infringement of his patent and about the infringing person.

However, in any case, the claim becomes barred by prescription five years after the date on which the infringement has occurred, although the period of prescription is suspended for the time between the filing of the patent application with the patent office and the grant of the patent.

Customs protection

As a member of the EU, Poland is bound by the Council Regulation (WE) No. 1383. Under the regulation, a patent holder can file with the Main Customs Chamber in Warsaw a request for granting customs protection, resulting in the prohibition of entry into the territory of Poland and export from Poland of goods infringing the patent.

A positive decision about the customs protection on a given patent is granted for one year, with a possibility of renewal. If the Main Customs Chamber in Warsaw gives protection to a patent, the customs authorities all over Poland are granted the right to seize and stop any suspect goods that may infringe the patent for 10 working days (which can be extended by 10 more days if justified properly).

Granting customs protection entitles the patent holder to officially contact the customs office that has seized the goods and ask for detailed information about the entity or person who declared the goods for customs clearance (the full name of the person or firm, its address, the commercial register number, data concerning the recipient and sender of the goods, the amount seized, samples of the goods, etc).

In the event of seizure and infringement of patent, the patent holder is obliged to provide the customs authorities within 20 working days (10 working days, which can be extended by 10 more days if justified properly) counted from the date the patent holder (or his appointed representative) is notified in writing of the customs seizure, with:

•  Confirmation of the institution of a civil proceeding before the Civil Court due to infringement of patent (which means filing the statement of claims or the request for interim injunction with the Civil Court); or

•  Consent from the importer of the seized goods for their destruction under customs supervision (the so-called ‘simplified’ procedure provided under the Regulation of the Minister of Finance on the Destruction of Goods under Article 11 of Council Regulation [EC] No. 1383/2003).

Otherwise, the goods are released by the customs authorities. According to the provisions of Regulation 1383/2003, Polish customs authorities have also the possibility to seize the goods even if customs protection has not been applied for or granted (seizures ex officio). Such ex officio seizure is made only for three working days to enable the IP rights owner to file the above-mentioned request for granting customs protection. Otherwise, the goods are released by the customs authorities.

New regulation

It should be noted that a new Regulation (EU) 608/2013 of the European parliament and of the Council of June 12, 2013 concerning customs enforcement of IP rights repeals Regulation 1383/2003. This new modified regulation will apply in the EU (including Poland) from January 1, 2014. Generally the new regulation is based on similar rules as stated in 1383/2003, however it also provides patent holders with new instruments which should enable more efficient actions against patent infringement.

The first solution is the obligatory use of the so-called ‘simplified’ procedure by the customs authorities, which means that in case of fulfilling certain conditions stated in the regulation, the seized goods can be destroyed under customs control “without there being any need to determine whether an IP right has been infringed under the law of the member state where the goods are found”.

Consequently the simplified procedure will no longer be an option for the member states—its use will be obligatory. The second instrument (which also should be useful for patent holders, particularly in small infringement cases) is a special procedure for the destruction of goods in small consignments (the justification of this procedure is the growing number of counterfeit/infringing goods sent in small consignments via postal or courier services).

Katarzyna Mełgieś is the head of IP enforcement team at Patpol. She can be contacted at:
katarzyna.melgies@patpol.com.pl

Jaromir Piwowar is a legal counsel at Patpol and a member of the IP enforcement team. He can be contacted at: jaromir.piwowar@patpol.com.pl