Part V - OJ 2004, 521

PL Poland - Impact of the European Patent Convention on national law

- OJ 2004, 521 -

On 1 March 2004, Poland became a contracting state to the EPC. Provisions implementing the EPC and bringing Polish patent law into line with the EPC are contained in the Act of 14 March 2003 on the filing of European patent applications and effects of the European patent in the Republic of Poland, in force as of 1 March 2004, and in the Act of 30 June 2000 on industrial property law, last amended by the Act of 23 January 2004.

A. National legal bases

1. Act of 30 June 2000 on industrial property law (consolidated text published in Journal of Laws of 2003 No. 119, item 1117); last amended by the Act of 23 January 2004 (published in Journal of Laws of 2004 No. 33, item 286) - hereinafter: IPL;

2. Act of 14 March 2003 on the filing of European patent applications and effects of the European patent in the Republic of Poland (published in Journal of Laws of 2003 No. 65, item 598), entry into force: 1 March 2004 - hereinafter: EPAL;

3. Regulation of the Council of Ministers of 29 August 2001 on fees relating to the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits (published in Journal of Laws of 2001 No. 90, item 1000), amended by the Regulation of the Council of Ministers of 2 March 2004 on fees relating to the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits (published in Journal of Laws of 2004 No. 35, item 309) - hereinafter: Fees Reg.;

4. Regulation of the Prime Minister of 17 September 2001 on the filing and processing of patent and utility model applications (published in Journal of Laws of 2001 No. 102, item 1119) - hereinafter: FPR;

5. Regulation of the Council of Ministers of 23 July 2002 on inventions and utility models concerning national defence and the security of the State (published in Journal of Laws of 2002 No. 123 item 1056).

6. Regulation of the Prime Minister of 29 July 2003 on the filing and processing of applications for granting a supplementary protection right for medicinal products and plant protection products (published in Journal of Laws of 2003 No. 141, item 1361).

B. Application of the EPC in Poland

The main provisions relating to the application of the EPC in Poland are summarised below:

The information is structured in the same way as in the EPO brochure "National law relating to the EPC".

I. Filing of European patent applications (Article 75 EPC, Article 3 EPAL)

A European patent application, other than a European divisional application, may be filed either with the EPO or with the Patent Office of the Republic of Poland (PPO):

Urzad Patentowy RP

(Patent Office of the Republic of Poland)

Al. Niepodleglosci 188/192

skrytka pocztowa 203

00-950 Warszawa

Poland

Tel.: (+ 4822) 25 80 01

Fax: (+ 4822) 875 06 80

A European patent application may be filed with the PPO in any of the languages under Article 14 (1) and (2) EPC. Filing of applications by facsimile is permitted. In such case, however, the original document shall be required to be furnished within 30 days from the date on which the transmission by facsimile was effected. This time limit shall be non-restorable (Article 13 (2), (3) IPL).

European patent applications filed by a Polish national having his domicile or a Polish legal person having his headquarters on the territory of the Republic of Poland, must be filed with the PPO and must be accompanied by a translation into Polish (Art. 3 (2) EPAL).

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC, Articles 4 EPAL and 287 IPL)

Under Article 4(2) EPAL, a published European patent application designating the Republic of Poland confers upon the applicant provisional protection under Article 287 IPL - cessation of the infringement, the redress of its consequences, the surrender of the unlawfully obtained profits and the compensation of damages in accordance with the general principles of law - as from the date on which a mention of the receipt of the Polish translation of the claims is published in the Patent Office Bulletin ("Biuletyn Urzedu Patentowego"). At the same time, the PPO makes the translation available to the public.

II. B. Filing a translation of the claims (Article 67(3) EPC, Articles 4 and 7(2)-(4) EPAL, Section 13(1) FPR in connection with Article 2 EPAL)

The translation of the claims must be drawn up in Polish, supplied in triplicate together with the bibliographic data of the application (a translation of the title of the invention and indication of a class into which the invention has been classified according to the International Patent Classification).

The applicant for a European patent or proprietor (holder) may, at any time, file a corrected translation (in triplicate). The PPO publishes a mention of the corrected translation in the Patent Office Bulletin and makes it available to the public at the same time as the mention in the Patent Office Bulletin is published. The corrected translation shall have effect with respect to third parties as of the publication date of the mention (Article 7(3) EPAL). Regarding the rights of a prior user where a translation is corrected, Article 7(4) EPAL provides for the safeguards mentioned in Article 70(4)(b) EPC.

Documents meeting the formal requirements of Rule 35(3) to (14) EPC are accepted.

Applicants not having their domicile or headquarters in the Republic of Poland must appoint a national patent agent (Article 236(3) IPL).

III. Filing translations of the patent specification (Article 65 EPC, Articles 6 and 7(5) EPAL)

The European patent has effect in the Republic of Poland only if the proprietor of the patent files with the PPO the Polish translation of the text with which the EPO intends to grant the patent, or maintain it as amended, within three months of the date on which the mention of the grant, or the mention of the decision to maintain it as amended, is published in the European Patent Bulletin (Article 6(2) and (3) EPAL).

Upon filing the translation (comprising the title of the invention, the description, any drawings, and the patent claims) in duplicate, the patentee shall also pay the fee for the publication of the translation. According to Fees Reg. Annex 1, I, item 11 the patentee shall pay PLN 80 plus PLN 6 for the 11th and each subsequent page of the translation. The total sum has to be paid within three months of the date of receipt of the PPO's invitation (Article 7(5) EPAL). The translation is published in a printed form without delay after it is received by the PPO. At the same time, the PPO makes the translation available for inspection in the PPO's reading room. The published translation indicates the date on which the EPO published the mention of the grant of the European patent (Article 7(1) EPAL).

The patentee may, at any time, file a corrected translation (in duplicate), subject to the payment of the above-mentioned publication fee (Article 7(6) EPAL; Fees Reg. Annex 1, I, item 11).

Documents meeting the formal requirements of Rule 35(3) to (14) EPC are accepted.

Applicants not having their domicile or headquarters in the Republic of Poland must appoint a national patent agent (Article 236(3) IPL).

In the event of failure to file with the PPO the Polish translation of the patent specification, the PPO declares the European patent void ab initio in the Republic of Poland.

IV. Authentic text of a European patent application or European patent (Article 70 EPC, Article 7(2) EPAL)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings (Article 7(2) EPAL); this does not apply, however, in revocation proceedings (Article 7(2) EPAL).

The applicant for a European patent or the patentee may, at any time, supply a corrected translation (in triplicate). The PPO publishes a mention of the corrected translation in the Patent Office Bulletin and makes it available to the public at the same time as the mention in the Patent Office Bulletin is published. The corrected translation shall have effect with respect to third parties as of the publication date of the mention (Article 7(3) EPAL). Regarding the rights of a prior user where a translation is corrected, Article 7(4) EPAL provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC, Article 8 EPAL)

Renewal fees in respect of European patents requesting protection in the Republic of Poland shall be paid to the PPO for each patent year following the year in which the EPO publishes the mention of the grant of the European patent. Each patent year starts from the anniversary of the filing date of the patent application. The renewal fees for each subsequent patent year are due on the last day of the month in which the preceding patent year expires (Article 224(2) IPL). The renewal fees may be paid within one year before the due date (Article 224(3) IPL).

In cases of non-payment of renewal fees, no reminders will be issued.

In case of failure to observe the time limit referred to above, renewal fees may still be paid within a period of grace of six months from the due date provided that a surcharge of 30% of the fee due is paid at the same time (Article 224(4) IPL). This time limit is not restorable.

For the payment of renewal fees, it is necessary to appoint a national patent agent if the patentee does not have his domicile or headquarters in Poland (Article 236(3) IPL).

Renewal fees are currently as follows (Fees Reg. Annex 1, II, items 1-18):

plus any charges levied by banks.

In the event of failure to pay a renewal fee within the prescribed time limit, a patent will lapse on the date on which a preceding period of protection has expired (Article 90(4) IPL). The PPO will issue a decision to this effect (Article 90(2) IPL). Lapse of a patent is recorded in the Polish Patent Register and communicated in the Official Gazette of the Patent Office ("Wiadomosci Urzedu Patentowego") .

VI. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC, Article 5 EPAL, Fees Reg. Annex 1, I, item 1)

The Polish law provides for conversion into a national patent application or a national application for a utility model in the case of refusal or withdrawal by the applicant or in the case of deemed withdrawal of the European patent application at the request of the applicant. Within two months the date of receipt of the invitation by the PPO, the applicant shall pay the filing fee (PLN 500 and PLN 25 for each page exceeding 20 pages of the description, claims and drawings) and file, in duplicate, a Polish translation of the European patent application as originally filed and, where appropriate, a translation of the application as amended during proceedings before the EPO.

These procedural steps must be taken by a national patent agent if the applicant has neither a domicile nor his headquarters in Poland.

VII. Payment of fees (Fees Reg.)

All fees may be paid by bank transfer to the account of the PPO ("Urzad Patentowy RP") at Polish National Bank ("Narodowy Bank Polski, Oddzial Okregowy Warszawa"), account No. (IBAN) PL93 1010 1010 0025 8322 3100 0000; BIC (SWIFT): NBPLPLPW; the effective date of payment in this case is the date on which the sum was credited to the account mentioned. The fees may also be paid in cash at the PPO; the effective date of payment in this case is the date marked by the date stamp on the payment form handed in at the PPO. Finally, the fees may also be paid by postal money order; the effective date of payment in this case is the date marked by the postal date stamp (at a Polish post office) on the postal money order.

VIII. Registering a transfer, licences and other rights in respect of a European patent in the national patent register (Articles 67, 76(6) and 229 IPL, Fees Reg. Annex 1, I, item 19)

In order to register a transfer of rights by transaction or by operation of law, or licences and other rights in respect of a European patent in the Polish Patent Register, the interested party must file a written request and submit the relevant document supposed to provide grounds for taking a decision on the entry into the Register by the PPO (Article 229(1) and (2) IPL). While filing the request, applicants do not need to use any special form, however they are obliged to pay a special fee of PLN 50 (Fees Reg. Annex 1, I, item 18). Furthermore, documents not drafted in Polish must be accompanied by a translation.

The following entries and data are recorded in the Register: transfers of rights, licences, other rights in rem, entries relating to disputes, data concerning invalidation or termination of a patent. The transfer of a patent has effect with respect to third parties as from the date of entry in the Register (Article 67(3) IPL). The holder of an exclusive license recorded in the Register may, to the same extent as the patent holder, enforce his claims in the case of infringement, unless the licence contract stipulates otherwise (Article 76(6) IPL).

Applicants not having a domicile or their headquarters on the territory of Poland are required to act in proceedings before the PPO through a national patent agent (Article 236(3) IPL).

A transfer registered by the EPO under Rule 61 EPC is not recognised.

IX. Miscellaneous

1. Simultaneous protection (Article 139(3) and 140 EPC)

The simultaneous protection by national patents and utility models according to Article 139(3) EPC in connection with Article 140 EPC is not excluded.

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of Poland.

C. Amendment of Polish patent law

1. Patentability (Articles 24-29 IPL)

The patentability criteria (concept of invention, novelty, inventive step, industrial application) are consistent with those of the EPC (Articles 52 to 57 EPC).

2. Term of the patent (Article 63(3) IPL)

A patent is granted for a term of 20 years, as from the date of filing the application.

3. Rights conferred by the patent (Article 66 IPL)

The rights conferred by the patent reflect the provisions of the Community Patent Convention (see Articles 25 et seq. CPC 1989 ).

4. Extent of protection (Article 63(2) IPL)

The extent of protection is determined by the claims. The description and the drawings may be used to interpret the claims (Article 63(2) IPL).

The protection conferred by a patent on a biological material possessing specific characteristics indicated in a patent claim or claims as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication in an identical or divergent form and possessing the same characteristics (Article 934(1) IPL). The protection conferred by a patent on a process that enables a biological material to be produced, possessing specific characteristics indicated in a patent claim or claims as a result of the invention, shall extend to biological material directly-obtained through that process and to any other biological material derived from the directly obtained biological material through propagation or multiplication in an identical or divergent form and possessing the same characteristics (Article 934(2) IPL). The protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material in which the product is incorporated and in which the genetic information is contained and performs its function, except the human body at the various stages of its formation and development and except the simple discovery of one of its elements including the sequence or partial sequence of a gene (Article 934(3) IPL in connection with Article 933(1) IPL).

The protection conferred by a patent shall not extend to biological material obtained by means of a single act of propagation or multiplication of biological material placed on the market by the holder of the patent or with his consent, where the propagation or multiplication necessarily results from the application of the biological material (Article 935(1) IPL).

D. Other international treaties

Poland has been a party to the Paris Convention for the Protection of Industrial Property since 10 November 1919 and bound by the Stockholm Act of this Convention since 24 March 1975.

The Patent Cooperation Treaty took effect in Poland on 25 December 1990. Since 1 March 2004 it has been possible to obtain a European patent for Poland by filing a Euro-PCT application.

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure took effect in Poland on 22 September 1993.

The TRIPS Agreement has been in force since 1 July 1995.

The 1991 Act of the International Convention for the Protection of New Varieties of Plants (UPOV) has been in force since 11 November 1989.

Poland became a party to the Strasbourg Agreement Concerning the International Patent Classification on 4 December 1997.