"IPR Legislation in Poland in the context of Polish accession to the UE"
Polish Industrial Property Law of 2000 (Polish IPR) has been harmonized with
the Laws of the UE. In fact, such harmonization was one of the conditions to
join the Union. Nevertheless, some differences exist. They result from not-full
harmonization of Polish regulations with the European ones (cf. Item 1 below)
or from adopted transitional solutions providing European entrepreneurs in
Poland with more favourable protection principles than those applicable in
"old" EU member states (cf. Item 2 below).
Consequences of Poland's jointing the European Patent Convention (EPC)
from 1 April 2004, European patents will be granted also for the territory of
Poland. Due to the fact that inventions in Poland will be protected based on
both domestic and EU patents, it is beyond doubt that the conditions for patent
protection and the scope of such protection should be identical. However, it is
not the case (as presented below).
Novelty of invention
- In accordance with Article 54 Section 5 of
EPC, the provisions
of paragraphs 1 to 4 do not exclude patentability of any substance or
composition, comprised in the state of the art, for use in a method referred to
in Article 52, paragraph 4, provided that its use for any method referred to in
that paragraph is not comprised in the state of the art. According
to the Amendment to EPC of 2000, it is also possible to protect the second and
the next use of the substance or the composition.
Polish law, the protectable–subject–matter is broader; it is possible to
protect any new use of known substance, that is to mean, not only the medical
- According to Article 55 Section 1 (a) of EPC,
the non–prejudicial disclosure takes place in two situations:
the said situations, it would not be possible to obtain the patent protection
in Poland because of lack of novelty. So, the conditions of novelty in that
respect are less strict in our country.
- an evident abuse in relation to the applicant or his legal predecessor, and
- no earlier than six months preceding the filing of the European patent supplication.
Interpretation of patent claims
accordance with Article 69 Section 1, the extent of protection conferred by a
European patent (…) is determined by the terms of claims. Nevertheless, the
description and drawings are used to interpret the claims.
the same provisions exist in Article 63 Section 2 of the Polish Law on
Industrial Property of 2000 (Polish IPR).
the Protocol to EPC, covering the applicable interpretation of Article 69 of
the EPC, stipulates that it should
not be interpreted in the sense that the extent of the protection conferred by
a European patent is to be understood as that defined by the strict, literal
meaning of the wording used in the claims, the description and drawings being
employed only for the purpose of resolving an ambiguity found in the
claims. Neither should it be interpreted in the sense that the claims serve
only as a guideline and that the actual protection conferred may extend to
what, from a consideration of the description and drawings by a person skilled
in the art, the patentee has contemplated. On the contrary, it is to be
interpreted as defining a position between these extremes witch combines a fair
protection for the patentee with a reasonable degree of certainty for third
my opinion, the above Article 63 Section 2 of Polish law lacks basis for the
application of interpretation assumed in the Protocol in circumstances where
the wording of patent claims is unambiguous. In such a case, the interpretation
is simply not carried out.
fact, I have serious doubts as to the point of the principles contained in the
Protocol. In practice, they increase legal instability and uncertainty. This is
reflected in divergent decisions issued in cases connected with violation of
the same European patent in various member states (cf. EPILADY case).
Consequences of Poland's accession to the EU
Protection Certificate (SPC) protecting pharmaceutical products and plant
from 1 May 2004, i.e., from Poland's accession to the EU, Supplementary
Protection Certificates will be issued in Poland on the terms and conditions
set forth in the Council Regulation (EEC) No. 1768/92 of 18 June 1992 and
Regulation (EC) No. 1610/96 of 23 July 1996.
exceptional cases, SPC will be granted despite non-fulfilment of the terms and
to Article 2 of the Law of 2002 adjusting Polish IPR, SPC may be granted for an active
substance or a combination of such substances which, on the date of Poland's
accession to the European Union, are protected by a basic patent and for which
the first permit for introduction to the Polish market or the European Union
market was obtained prior to Poland's accession to the European Union, but not
earlier than on 1 January 2000 (Section
Application for an additional protection right in
cases referred to in Section 1 may be filed within six months of the date on
which Poland became a member state of the European Union (Section 2).
scope of application of this exceptional regulation may be disputable.
Pharmaceutical products and chemical compounds as such have been protected in
Poland since 1993, while the methods of their production were protected even
earlier (an indirect protection of products applied then, provided that they
were produced with the use of patented methods).
a question arises whether the "basic patent" referred to in the above
regulation is just a patent protecting products as such or a patent protecting
my opinion, the standpoint that SPC may be granted exclusively when the
protection concerns products as such is justified and grounded.
Exhaustion of rights
to Article 70 Section 1 of the Law, the
rights conferred by a patent shall not extend to acts concerning a product
embodying the invention or manufactured by means of the invention, consisting in particular of its offering
for sale or further putting on the market, if that product has been put on the
market on the territory of the Republic of Poland by the patent holder or with
1 May 2004, Section 2 of this Article entered into force, according to which a patent shall neither be considered
infringed by an act of importation into the territory of the Republic of Poland
or other acts referred to in section (1) in respect of a product that has
earlier been put on the market on the territory of the European Economic Area
by the patent holder or with his consent.
can observe that the principles of exhaustion of rights applicable in Poland
have been taken from those set in the European case law.
special principles concern, temporarily, pharmaceutical products.
Poland's Accession Treaty, Appendix No. II Item 4, provides for the so-called Specific Mechanism, according to which:
With regard to the Czech Republic, Estonia, Latvia,
Lithuania, Hungary, Poland, Slovenia or Slovakia, the holder, or his
beneficiary, of a patent or supplementary protection certificate for a
pharmaceutical product filed in a Member State at a time when such protection
could not be obtained in one of the abovementioned new Member States for that
product, may rely on the rights granted by that patent or SPC in order to
prevent the import and marketing of that product in the Member State or States
where the product in question enjoys patent protection or SPC protection, even
if the product was put on the market in that new Member State for the first
time by him or with his consent.'
Any person intending to import or market a
pharmaceutical product covered by the specific mechanism in a member state
where the product enjoys patent or supplementary protection shall demonstrate
to the competent authorities in the application regarding that import that one
month's prior notification has been given to the holder or beneficiary of such
should be noted that the restriction set forth in the above regulation is
unilateral since it provides for no obstacles for import of products from
Member States to Poland (as regards such circumstances, the principles
contained in Article 70 Section 2 of Polish IPR apply). In my opinion, the
above presented regulation should be evaluated positively since, in practice,
it allows for the sale of pharmaceutical products in Poland at lower prices.
Michal du Vall is a professor of the Jagiellonian
University, dean of the Management and Communication Faculty of Jagiellonian
University and head of the Competition Law Department of the Institute of the
Intellectual Property in Cracow. Professor du Vall was also a visiting
professor on many distinguished universities such as: Stanford University,
University of London and Max-Planck-Institute in Munich.
du Vall is a attorney at law and a Parnter in Szwaja, du Vall, Nowinska office
and represents his clientes in a range of competition law and intellectual
property cases. In the years 1990-1992 Professor du Vall as a representative of
Poland, took part in the work of an international workgroup, created by the
European Community Studies Association (ESCA), sponsored by the EU, whose
assignment was to determine the what extend the ownership transformations
in Middle-European countries correspond to European standards. The work
resulted in a report, which was published in a book: Privatisation and
Regulatory Change in Europe, ed. M.Moran and T.Proser, Open University Press
1994. Professor du Vall is also a co-author of the Commentary to the Treaty
signed between EU and Poland, preparing part on the intellectual property law
problems. Professor du Vall has published over 150 books and articles in Poland