Where a company or individual based in Poland is involved in developing an invention you take a risk if you don’t file first in Poland, according to Dr Agnieszka Zebrowska-Kucharzyk.
In an era of increasing globalization the pressure to unify patent systems has led to standardization of the internal, national and regional patent regulations in most countries worldwide. This situation is also an outcome of establishment of great, multi-national companies, international holdings and other types of interrelated corporations that has created multinational groups of researchers working jointly on new and innovative technical solutions. Therefore, the number of patent applications filed on behalf of more than one applicant of different domiciles is constantly growing. The same applies to Polish companies, not only being a part of multinational holdings but also national companies, or institutions that closely cooperate with foreign entities. This seemingly regular situation would not be noteworthy, if there were not specific regulations regarding the first filling requirements in Poland that, in some situations, might generate problems. In our everyday work we observe significant increases of public awareness regarding IP rights. Nevertheless, it seems that the regulation stipulated below, which relates to the first filing requirement, is neither generally known nor fully complied with.
Unlike in many other countries, Poland has no requirements relating to foreign filing licenses nor to having an authorization for filing abroad. That said, if the applicant is a Polish national domiciled on the territory of the Republic of Poland then, for national security purposes, the first patent application related to an invention should be filed with the Patent Office of Republic of Poland (PPO). In particular, according to Art. 40 of the Industrial Property Law (IPL):
“[a]n invention for which a Polish legal person, or a Polish national, having his domicile on the territory of the Republic of Poland, wishes to seek patent protection in another country, may only be applied for protection in that country, when first has been applied for protection with the Patent Office.” Similarly, we also find special provision in the Act on the filing of European patent applications and the effects of European patents in the Republic of Poland. The Act clearly indicates that: “a Polish citizen, or a legal, or natural person with residence on the territory of the Republic of Poland shall be obliged to file the European patent application with the Polish Patent Office. […]. Where the European patent application has been filed with the Polish Patent Office, the provisions of Article 40 of the Industrial Property Law shall not apply.” Therefore, a Polish citizen, or a company, having its domicile in Poland, can also file an European patent application, provided that this application is filed via the Polish Patent Office. There are no corresponding regulations in relation to international patent applications filed with the PPO, acting as a Receiving Office. The Polish doctrine stipulates that such international patent application ought to be treated as a foreign patent application. Therefore it is rather unlikely that filing an international patent application via the PPO will be considered as satisfying the first filing requirement in a manner similar to filing of the European patent application with the PPO. The requirements defined in the IPL and in the Act on the filing of European patent applications and the effects of European patents in the Republic of Poland differ in terms of defining, or making a reference to various manners of relationships with the territory of Poland. However, the unification of the above cited legal norms is provided by the Polish Civil Code in Articles 25-28, wherein we find some guidelines in relation to definition of the term “domicile”. This establishes that it is a place of residence connected with the permanent life activity of a Polish national or a Polish legal person, even after departure, if sufficient links with the place of origin are maintained and/or intent to depart is not expected to be permanent.
Consequently, a Polish citizen, or a foreign national residing in Poland, or an institution/company having residence in Poland should file a patent application in Poland with the PPO (either as a Polish or European patent application).
Moreover, it is interesting to note that applications filed to fulfil the first filing requirement do not need to be filed in the Polish language. At present, for the purpose of securing the priority claim, the PPO accepts applications filed in languages other than Polish, for example in English. In the case of European patent applications filed in English, French or German, the translation of the abstract into Polish is the only language requirement. Therefore, translation of the entire European application is not necessary.
Failing to file in Poland first
Surprisingly, Polish patent law foresees neither direct sanctions nor punitive measures for violation of the above mentioned provision. As a result, the requirement of Article 40 of IPL is not observed for many patent applications. Furthermore, there are no direct legal consequences of failure to comply with the obligation.
First of all, no national Patent Office other than the PPO is bound by such provisions. Moreover, no other regional and/or national office ought to be familiar with the specific Polish regulations and these Polish internal regulations will not affect the proceeding before other Patent Offices. Even so, an increasing number of applications not fulfilling the requirement of art. 40 IPL enter, at a later stage, the national phase in Poland, either as conventional applications, national parts of international applications or validated European patents.
According to Article 14 of the IPL, the priority to obtain a patent based on the first duly filed foreign patent application can be claimed in Poland under the terms of international agreements, provided that the Polish patent application is filed within 12 months of the priority date by the first applicant or his successor in title. This provision is an implementation of the standards set forth in Article 4 (a) of the Paris Convention for the Protection of Industrial Property (Paris Convention) that states that “any person who has duly filed an application for a patent (…) in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.” The patent application is, however, duly filed, only if it meets all the formal requirements stipulated by legal regulations related to the validity of filed patent application with the national patent office of the country, wherein such first patent application is filed.
Therefore, during examination of formal requirements of the conventional or international patent application filed with the PPO, the formalities officer might notice that the claimed priority is not claimed duly and consequently may refuse to acknowledge the claimed priority date. In such a situation the provision of art. 4 b of the Paris Convention does not automatically apply. The result is that all relevant disclosures made during the interval between the date of the priority application filing and the subsequent filing date of the Polish patent application, including inter alia the disclosure of the priority document itself, become a part of the state of the art. In this scenario, the priority document, when included in the state of the art, can be cited at a later stage during substantive examination by an Examiner as a novelty and/or inventive step undermining document in relation to all inventions disclosed and claimed by such priority application.
A slightly different situation might take place in relation to European patent applications granted by the European Patent Office (EPO) in the centralized, regional procedure. According to Article 6 of the Act (on filing of European patent applications and the effects of European patents in the Republic of Poland) European patents, for which the Republic of Poland is among the states designated as a country of protection, shall confer the same rights as those conferred by patents granted under the Industrial Property Law.
Poland is not a member of the London Agreement. So, in order to obtain patent protection from the patent granted by the EPO, it is necessary to file the Polish translation of that European patent with the PPO within three months of the date of publication by the EPO of the mention of the grant of that patent. It should be emphasized that after the three months lapses the PPO issues a decision declaring such European patent null and void on the territory of the Republic of Poland.
However, when an European patent is validated in Poland then it becomes a part of the Polish legal system and the IPL shall accordingly apply to such patents. According to Article 89 IPL such patent may be invalidated in entirety or in part, at the request of any person having a legal interest, if the statutory requirements for the grant of a patent have not been satisfied. Such requirements are according to Article 138(1) EPC defined in Article 52-52 and include lack of novelty and lack of inventive step.
Despite the fact that the situation has not arisen so far, and it might seem controversial, there potentially exists a risk that the patent granted under the European procedure might be invalidated in Poland. Or at least in part corresponding to the inventions disclosed in the priority application, due to nonfulfillment of mentioned above mandatory novelty requirement. This is because the priority has not been duly obtained in the meaning of Article 4a of Paris Convention. In summary, taking into account the wording of Article 40 IPL, if the applicant having his domicile on the territory of the Republic of Poland would like to obtain valid patent protection on their invention in Poland it is strongly recommended that the first patent application is filed with or via the PPO. Otherwise, the grant of patent protection might be refused in the granting procedure before the PPO or the granted patent protection, obtained in both the national as well regional procedure, can be invalidated in the territory of Poland.
Dr Agnieszka Zebrowska-Kucharzyk, Patent Attorney, Patpol
Agnieszka is Head of Patents at Patpol, European and Polish Patent and Trademark Attorneys. She specializes in prosecution of patents in the field of chemistry, pharmacy and biotechnology, as well as, obtaining SPCs, inter parties proceedings before the Patent Office as well as administrative courts. She has been a Polish patent and trademark attorney since 2008, and is in the process of obtaining the European Patent Attorney qualifications. Agnieszka is the co-author of scientific publications in the field of bioelectrochemistry and biophysics, as well as publications related to industrial property.