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LimeGreenIP News

Advances in Polish IP law, part 1: Patents – Indirect infringement, limitation of scope & state of the art searches

The bill amending the Industrial Property Law, published on 14 November 2017, introduces important changes with respect to patent protection. The bill adapts the Polish provisions to the European Patent Convention, as well as the Patent Cooperation Treaty of 1970. The bill is presently being discussed within the Council of Ministers.

The bill stipulates, among other things, a broader scope of protection for patent owners. It covers the prohibition of supplying or offering to supply the means relating to the essential element of an invention which would make it possible to put the invention into effect. In practice, this opens up more opportunities for the originator pharma companies to enforce their patent protection. These provisions enable the originator companies to prevent third parties from knowingly supplying generic manufacturers with substrates, which in themselves, are not covered by patent protection, but can be used for a synthesis of the active substance which is considered the actual invention. This form of patent infringement (referred to as “indirect infringement”) has not existed in the Polish legal system thus far. Current regulations only enable entitled parties to prohibit third parties from making, using, offering, putting on the market, or importing for these purposes any product or process that enjoys patent protection. This protection also covers products directly obtained from this process.

Thanks to another amendment, entitled parties will now be able to request that the scope of patent protection is limited by way of amending patent claims. Currently, an applicant can only request this change before patent protection is granted. This new regulation partially applies legal instruments introduced by the European patent convention, under which entitled parties can request that the scope of protection is limited by amending the patent claims in the course of patent invalidation or opposition proceedings. This approach often saves a patent by limiting its scope.

However, disappointingly, the proposed changes to the Act are of a more limited nature. According to the bill, entitled parties can file a motion for limiting the patent only if the patent is not the subject of invalidation or opposition proceedings. In practice, this solution seems quite useless for a patent owner and does not respond to their needs, aimed at preserving their right to a patent in connection with precisely these proceedings.

The bill also stipulates the international-type search carried out by the International Searching Authority, a measure which can enable an applicant pursuing patent protection to obtain more detailed information on the state of the art, as compared to the results of a search conducted only by the national authority. The results of this search enable an applicant to determine any potential territorial scope of the patent protection within countries which are party to the Patent Cooperation Treaty.

We expect that, the bill will be passed before the end of 2018 but will report on further developments here.