Patenting Problems in Poland
“Problems with IP protection are usually a subject of choice for IP professionals”, says Marek Bury, an IP specialist in Poland. With technology quickly advancing, Marek speaks on how Poland is adapting to such change.
“That is what we find interesting. Our reports often look pessimistic. It should be stressed that obtaining and enforcement of patents in Poland is possible, even if not easy, and that wealth and market generated by a population of 38 million citizens have a potential for providing generous compensation for IP inconveniences.”
With automation and robotics quickly advancing, how would you advise those involved to change their game regarding patenting their invention?
Our world is getting more and more digital. At the time patent systems were designed, technical problems used to be solved with “iron, coal and heavy machinery”. Nowadays, solutions to technical problems tend to mainly consist in finding a way of controlling hardware and programming it. Therefore, inventions migrate away from mechanical machinery and analogue electronics towards digital electronics and computer implemented inventions. This phenomenon complicates prosecution and enforcement of patents because legal regulations and practices are not harmonized between various countries. Even in Europe some jurisdictions apply very different approaches towards computer implemented inventions than European Patent Office. Effect of European patents can be invalidated in contracting states and respective authorities are not compelled to interpret the regulations of European Patent Convention according to EPO case law and guidelines. The Polish Patent Office is one of such authorities. It is responsible for all patent invalidation actions in Poland and its examiners quite openly declare that computer implemented inventions are, in their opinion, not technical and hence not patentable.
Have there been any recent regulatory developments in Poland to affect your work with patents? Are there plans in this respect?
A main legal act covering patents in Poland, the Industrial Property Law, has recently been subjected to rather frequent amendments, thrice in 2015. One of the amendments addressed directly issues related to computer implemented inventions and modern electronics. A requirement has been laid down (art. 33.3) to draft method claims using features concerning technical processing of matter. This requirement intentionally excludes all compressing and encoding methods. On the other hand, implementing rules laid down in Regulation of the Prime Minister on filing and processing of patent and utility model applications, were amended in a manner making the process of rejecting computer implemented inventions more laborious for patent examiners. Nevertheless, all these changes have had rather limited impact on the practice of the Polish Patent Office according to which software exclusion is interpreted much more broadly than in the European Patent Office (EPO).
What filing scheme can be recommended to obtain a valuable protection on (radio) electronic, or computer implemented inventions in Poland?
The most reliable path to patent protection on computer implemented inventions, encoding/decoding methods, signal and image processing methods, digital modulation schemes in Poland, still leads through the EPO – exactly as designed in the European Patent Convention (EPC) having patent granted by the EPO and then validated. However, Poland adopted the provision of the EPC which contributes to the significant effort required to have the effect of granted European Patent valid. Whole patent specification needs to be translated and in case it defines narrower scope of protection, it is the Polish text which is supposed to be applied. Otherwise, quality of translation does not seem to matter much – theoretically. In practice, the claims must be well translated as the scope of protection defined by poorly translated claims can be argued to be null. On the other hand, description can be used to interpret claims in infringement procedures. Although translations can be corrected, changes are effective only after the Polish Patent Office publishes corrected text and this can take a while. Moreover, the infringement cases are still handled by common courts. Judges are not yet very well versed in intellectual property, and hence, they are pretty susceptible to argumentation based on good/bad faith and general honesty. Amendments to the documents defining scope of protection during prosecution are not working to the advantage of the party which makes them. In a view of the above implementation of specialised Intellectual Property Courts in Poland is a change very much longed for. But for the time being it is crucial to have translation texts verified by someone working with patents professionally.
Another risk factor is the possibility of invalidating the effect of the European Patent in Poland in nullity proceedings before the Polish Patent Office (PPO). The PPO does not consider itself bound by the EPO case law or guidelines and is willing to use own interpretation of EPC articles. Therefore, a risk that subject matter of granted European Patent may be found non-technical and hence not patentable by the PPO in the nullity proceedings is not negligible. The risk can be reduced if there are given hints or embodiments showing that the invention as defined in claims can not only be implemented digitally, but also in analogue electronics.
Marek Bury
Managing Partner
Marek Bury deals mainly with the cases concerning patents, particularly in the field of electrotechnics, mechanics, telecommunication and information technology. He is an author and co-author of approximately 30 scientific publications concerning radio electronics and 5 works concerning industrial property. He provides advice regarding optimal IP protection and assistance in patent and UM drafting, prosecution and litigation as well as invalidation of inaccurately granted patents and rights under utility designs.
Bury & Bury have been patent attorneys for generations. In our work, we put strong emphasis on sound technical knowledge and engineering education. We take care to be well-versed not only in the procedural nuances of the industrial property law, but also in how entrepreneurs can use the industrial property and how it can be translated into their profit. As a result, we can understand the needs of our clients and advise them well.
