Legal Alert: Changes in the Polish Industrial Law concerning patents

The purpose of the amendment was to better harmonize the provisions of the Polish Industrial Property Law on Polish patents (and, indirectly, also on the Polish validations of European patents to the extent Polish law applies to them directly) with the EU law (in particular the IP Enforcement Directive) and with the provisions of the European Patent Convention.

Key changes introduced will cover:

Changes to the patent application procedure (prosecution):

• The applicant's obligation to clearly indicate the technical problem solved by the invention is introduced.
• The requirement that the invention must have a (direct and physical) impact on the (physical) matter is abolished (potentially increasing the chances of patenting computer-implemented inventions in Poland which was close to zero in the past).
• A clear 9-month deadline (from the priority date) for the Patent Office (PPO) to prepare the prior art report, and the obligation (not an option) of the PPO to prepare an initial assessment regarding the uniformity and patentability of the invention is introduced.
• The applicant's right to request that the PPO carries out an international-type prior art search is introduced.
• An insufficient disclosure as an independent ground for refusal of registration of a patent is introduced (the patent application will be rejected if an invention is: (i) not presented in a clear and comprehensive way so that a skilled person can carry it out, (ii) the claims do not specify the subject of protection clearly and concisely and/or (iii) the claims are not entirely supported by the description of the invention).

Contentious matters (opposition/nullity action):

• An explicit right of the patentee to limit the patent by amending the claims is introduced (it was disputable in the past), and is now explicitly possible also in the course of the opposition and/or patent revocation proceedings (within specified deadlines). Limitation will have ex tunc effect. It will be possible to jointly decide the limitation and opposition/invalidation by the PPO (in its discretion).
• As a part of the new revised request for securing evidence procedure, a right of the patentee to request, among other remedies, that a reasonable amount of samples of goods, materials or the tools used to manufacture or distribute these infringing goods and related documents are seized even before the main…