Major changes to the Industrial Property Law
A long-awaited bill to amend the Industrial Property Law of 30 June 2000 was submitted to the Sejm on 12 March 2015. The proposed changes affect dozens of regulations. The bill would repeal some existing provisions but also introduce new features to the law.
The justification for the bill stresses that the purpose of the amendment is to implement European Union law, and it is necessary because of:
- Revision of the European Patent Convention of 5 October 1973
- Changes in interpretation of the Polish translation of the European Designs Directive (98/71/EC)
- Issues under the Trademarks Directive (2008/95/EC) and the Biotechnology Directive (98/44/EC)
- Poland’s coverage by the Geneva Act of 2 July 1999 (part of the Hague Agreement on International Registration of Industrial Designs) and the Singapore Treaty of 2 July 2009 on the Law of Trademarks, and
- The need for Polish law to reflect rulings of the Court of Justice of the European Union.
Changes in general regulations
One of the changes is to clarify the rules for curing formal defects in a power of attorney. The Polish Patent Office may summon the attorney to cure defects within a reasonable time, or otherwise the proceeding will be discontinued or the office will not take an action that requires payment of a fee (Industrial Property Law Art. 237(5)). Application of provisions of the Administrative Procedure Code on appointment of experts upon request of a party in contested cases is also excluded, which is intended to streamline proceedings before the Patent Office (Art. 253(3)).
Changes on financial matters include clarification of the rules on payment of fees to the creator of an invention, a utility model, an industrial design or an integrated circuit layout design when this issue is not covered by an agreement (Art. 22(3)). The possibility of seeking partial relief from the fee for an application would also be expanded to trademarks and industrial designs (currently this is possible only upon filing of inventions or utility models), and the amount of the minimum fee for an application is cut in a case where the applicant demonstrates an inability to pay the full fee (Art. 226(1)). The bill addresses the issue of a party’s coverage of the costs of translation of materials and evidence filed during the course of an application proceeding and before the administrative court, as well as the possibility for the Patent Office to demand payment of an advance to cover translation costs (Art. 2421). The justification for the bill explains that the changes in the fee regulations are designed to encourage the filing of more national applications, particularly by individuals and small businesses.
Patent changes
Notably, the bill introduces a new register of protective rights (Art. 228(1)(11). The additional rights would cover medicinal products and plant protection products produced in accordance with a protected invention, and would be an exclusive right separate from the patent. Information about such rights is currently included in the regular patent register, which could cause confusion as to the nature of the right that has been awarded. This change would also require issuance of a new government regulation on the registers maintained by the Patent Office.
The justification for the bill explains that in order to eliminate doubts concerning proceedings involving inventions which could constitute classified information for purposes of the Classified Information Protection Act of 5 August 2010, the definition of a “secret invention” in the Industrial Property Law would be clarified; in place of “an invention constituting a legally protected secret,” it is proposed to use the phrase “an invention constituting classified information which has been assigned a clause of ‘top secret,’ ‘secret,’ ‘confidential’ or ‘reserved’” (Art. 57(1)).
The bill introduces “novelty relief,” meaning that it would be possible to obtain a patent or rights to a utility model notwithstanding disclosure by third parties. A condition for obtaining this relief is that the application is filed no later than 6 months after a disclosure which was clearly prejudicial to the applicant or its legal predecessor (Art. 25(5)). The current regulations rigorously require that for an invention to be novel (which is a basic condition for award of patent protection) it must not have been disclosed in any way, anywhere in the world.
The bill also provides that upon application of the competent authority, the Patent Office will make an entry in the register reflecting the seizure of a patent (Art. 67(5)).
Industrial design changes
One important change is introduction into the Industrial Property Law of the rules for recognition in Poland of the effects of international registration of industrial designs on the basis of the Geneva Act. As explained in the justification, this change was sought by applicants and the patent attorneys’ bar. The owner of an industrial design will be able to obtain protection for the design in the countries indicated by filing a single application directly with the International Bureau of the World Intellectual Property Organization, and the international registration of the design will exert the same effects in each of the indicated countries (Art. 1171–1175).
The bill also affects the very definition of an industrial design, by providing that the “texture”—rather than the “structure”—of a product which is the subject of an industrial design is one of the items that should be considered when determining whether there is a new form of the product. Also, a “replaceable component part of a complex product” (rather than merely a “component part”) is to be regarded as a product. The provision stating that any part which is the subject of independent trade is regarded as a product and can be the subject of a protected industrial design (Art. 102) would be dropped.
Trademark changes
The bill provides for a number of changes in trademark regulations. Among other things, it is recognised that extension of protective rights to a trademark for an additional period is made by way of a decision (Art. 153(3)–(4)). This approach is consistent with the view expressed by the Supreme Administrative Court in its order of 11 September 2006 (Case II GSK 71/06).
The bill expands the possibility of obtaining joint protective rights to a trademark by enabling rights to granted to several persons, including businesses, who file the trademark jointly (Art. 122).
An important new solution under the bill is to regulate the issue of “letters of consent.” So far the Polish Patent Office has refused to register identical or similar trademarks, even for an applicant operating within the same capital group and with the consent of the holder of the prior trademark. The amended act would provide that protection should be granted to a trademark that is similar to a prior trademark if there are economic ties between the applicant for the similar mark and the holder of the earlier mark and the applicant presents an agreement with the holder of the earlier mark (Art. 1351). The justification for the bill states that recognition of the institution of letters of consent will enable applicants to obtain trademark protection in cases where the Patent Office is now required to issue a refusal. It is anticipated that about a thousand positive decisions will be issued each year as a result of this change.
Consequences of proposed amendment
Simplification of the procedures for registration of industrial property rights and elimination of doubts surrounding registration should help applications be considered more quickly. Reducing the amount of correspondence between the Patent Office and applicants may help avoid appeals and cut the period for ruling on applications from about 36 months to about 30 months.
Meanwhile, clarification of the regulations concerning the effects of inheritance of trademark rights, as well as the rules for payment of fees to creators of inventions, utility models, industrial designs and integrated circuit layout designs should lead to greater legal certainty.
The bill to amend the Industrial Property Law carries hopes for easier access to protection of intellectual property and greater competitiveness and growth of Polish business through quicker proceedings before the Polish Patent Office and reduced fees for certain types of proceedings.
The bill is currently working its way through the legislative process at the Sejm. The first reading of the bill in committee was held on 8 April 2015. Progress on the bill can be tracked at the Sejm website.
Marzena Białasik-Kendzior, Intellectual Property Practice, Wardyński & Partners
