A new approach?

a-new-approach---image

Poland has taken the first steps towards treating software-related inventions as the European Patent Office does. Weronika Witkowska, Patpol explains how the country has reached this point.

Some of the latest judgments of the Supreme Administrative Court (SAC) seem to open a new period in the history of protection of software-related inventions (also called computer implemented inventions or CII) in Poland. There were at least two judgments in which the SAC indicated that the Polish Industrial Property Law (IPL) should be interpreted by the Polish Patent Office (PPO) in a way as similar as possible to the practice of the European Patent Office (EPO). Consequently, national and foreign applicants have been given new hope for positive decisions in their long-pending software and computer-related patent application cases.

Patenting of software-related inventions has been a very sensitive issue in Poland for quite a time. Obtaining patent protection for this specific kind of invention appeared to be a real problem since the PPO restricted its approach towards the technical character requirement in the years 2003-2004. Applicants who had their patents granted before that period were lucky. Since 2003, at least nearly 100 Polish patent applications covering software-related inventions have been refused or went abandoned every year because of the negative attitude of the PPO. In the meantime, many of the parallel European applications were granted patent protection.

Different approaches

Both national patent regulations of the last few decades – the former Act on Inventiveness (1973, in force till 2001) and the current IPL – provided exactly the same requirements as those prescribed by the European Patent Convention (EPC) for a solution to get patent protection:

  • technical character of a solution,
  • novelty,
  • inventive step, and
  • industrial applicability.

The source of all the problems is the PPO’s way of assessing the technical character, even though one can say that the PPO applies exactly the same criteria in this respect as the EPO. According to the practice of both offices, an invention is a solution having technical character. If a solution is not technical it may not be an invention in the meaning of EPC or IPL, in other words be a subject of patent protection. Moreover, the lists of the solutions excluded from patent protection as non-inventions are more or less the same in both jurisdictions. So where does the different approach of the two offices come from?

The EPO acknowledges a claimed subject matter to be an invention if due to its implementation a further technical result is achieved. On the other hand, the PPO acknowledges a claimed subject matter to be an invention (a solution having technical character) if its inventive contribution (the characterizing part of the claim) contains at least one technical feature understood as a material feature or a feature related to direct processing of the matter. Such interpretation, and hence the very restrictive attitude of the PPO, results directly from the implementing regulations of the IPL. According to these implementing regulations:

“The PPO will not consider a claimed solution to be an invention in particular if it does not refer to any physical product defined by technical features of its construction or composition, or to a defined way of technical influencing the matter.”

In practice such doctrine became even stricter than the British “contribution approach”.

The result? No software-related inventions could obtain patent protection in Poland, not even those related to quite definite techniques, such as the software aided modulation or encoding techniques.

As Poland acceded to the European Patent Convention (2004), it was not long before a real battle with the PPO started. No reason seemed to exist any more for Polish patent applications to be treated more restrictively than the EP applications that were able to finally become patents valid in Poland. Complaints started to be filed to the Provincial Administrative Court (PAC) against many of the PPO decisions refusing patent protection to software-related inventions.

It should be noted that since 2004, when the current law on the administrative procedure entered into force, the decisions of the PPO have been controlled in the first instance by the PAC in Warsaw and in the second instance by the SAC.

Court approval

The very first verdict of the PAC in Warsaw (No II WSA 3937/02), issued in a PPO decision case, in which the term ‘technology’ was defined, resulted in a long-lasting period of the unfavorable attitude of the PPO to software-related inventions in Poland. In the said verdict the court concluded:

“Technology is an area of human activity the theoretical base of which is constituted by those applied natural sciences that require practical verification. On the other hand, the areas of human activity the theoretical base of which is constituted by mathematics, linguistics, programming etc., i.e. the sciences requiring exclusively logical verification, remain outside the area of technology. In order to examine a given solution it should be analyzed so that both technical and non-technical components thereof are taken identified. The solution shall be deemed a patentable invention if at least one from among its technical components is new and non-obvious. If the inventive contribution lies solely in the non-technical elements it is deemed non-patentable.”

It was deduced from said definition of technology that the term “technical character” meant “material character”, covering only a material contribution to a solution and not a logical contribution, which is in accordance with the Polish implementing regulations mentioned above.

Till 2011 most of the complaints filed by applicants against PPO decisions refusing patent protection to software-related inventions were dismissed. Moreover, the Polish judicial reality turned out to be very problematic. As far as the technical character of a solution was concerned, the court of first instance always referred to the well established, though old-fashioned, Polish doctrine in the domain of industrial property protection maintaining that a solution is technical provided that it influences the matter through its new application and results in a physical product having a new structure or composition, or results in a new way of direct technical influencing the matter.

On the other hand, as there is no specialized patent court in Poland and the administrative court judges have no technical background, it has never come as a surprise that the tough issue of technical character has not been properly addressed by the judges for many years. Some verdicts, even if favorable to the applicant, were based on the statement that procedural law has been violated and the cases were returned to the PPO without special court indication regarding the assessment of the technical character. Also, since most applicants got discouraged by the negative decisions of PAC, the decisions were hardly ever appealed to the SAC.

The result? In the period of about eight years between 2004 and 2012 a clear and conservative practice based on the case law was established. However, none of the court verdicts of that period properly discussed the arguments of both parties and no explanation was provided on why such a strict approach, neglecting most of the other current foreign practices, including. the European practice, should be the only one allowed under the current national law. The dynamic changes of interpretation of the patentability criteria all around apparently had no influence on the Polish reality.

With time it became clear that as long as this question of law was not brought to the SAC, the meaning of the notion of ‘technical character’ would continue to be susceptible to the established interpretation of the PPO, albeit with the official approval of the PAC. Apparently, judges of the PAC did not acknowledge the problem and generally avoided indulging in a deep and broad discussion about a dynamic definition of “technology” or “technical character of a solution”.

Milestone verdicts

Finally, in 2012 a long awaited change of the jurisdiction line took place. There were two milestone verdicts of the SAC that changed the picture: No II GSK 85/11 of March 19, 2012, and No II GSK 300/11 of March 21, 2012. The justification of No II GSK 300/11 stated among other things that:

“….since the national provisions establishing the patentability criteria correspond to those defined by the European Patent Convention (EPC), they should be interpreted in the same way. Implementing regulations should be established in consideration of the position of the EPC in the national system of law (an international agreement ratified by a legislation  Journal of Laws 2003, No. 193, item 1885). The issue of compatible interpretation is of great significance on the international level (in the limits of the EPC coverage). It should not be forgotten that in the countries bound by the EPC both the relevant law shall be adapted to the EPC and the practice of the EPO shall be taken into consideration and adopted.”

Later on, two other cases (No II GSK 864/11, No II GSK 1069/11) acknowledged a new jurisdiction line to be established in Poland towards computer implemented inventions. In No II GSK 864/11 dated April 12, 2012 the importance of the TRIPS agreement has also been considered:

“The court of first instance, having admitted that the Plaintiff failed to prove that the Polish legislation provided narrower protection than that resulting from the TRIPS agreement, had not noted that in the current case it was not the actual wording of the Polish legislation that mattered but the way of interpreting by the PPO some of the provisions of the law. […]. The PPO is also wrong in considering itself independent of the Article 27(5) of the Washington Treaty in understanding and applying the patentability criteria.”

“ (…) It results from the above considerations that the SAC hereby contests the interpretation of the technical character requirement of an invention under Art. 10 of the Act on Inventiveness, as established by the PPO and accepted by the court of first instance. The SAC further disagrees with the assumption constituting the source of the said interpretation, that in lack of a definition of the concept of technical character of an invention in the national and international law binding for Poland, this concept may be interpreted independently of the practical interpretation of the same concept based on the international law.”

However, it should also be noted that the situation is not so clear yet. We still have to wait until new decisions are issued by the PPO, as this will show us the real impact of these new SAC decisions on PPO practice. For the moment, no spectacular changes have been noticed in the way of assessing the technical character of inventions by the PPO. “Old style” official communications continue to be issued. It will also certainly take some time for the PAC to accept this new approach. But for sure the first step has been taken – or as some say – forced on the authorities.

Résumé

Weronika Witkowska is a specialist in electronics at Patpol – European and Polish Patent and Trademark Attorneys. Formerly worked at the Polish Patent Office as a patent examiner.

weronika.witkowska@patpol.com.pl