POLAND Law and Practice Contributed by: Krystyna Szczepanowska-Kozłowska, Marcin Ziarkowski, Krzysztof Popławski and Kacper Sobolewski, A&O Shearman
• The patent holder has asserted that the acts cov ‑ ered by the action constitute an infringement of the patent. This assertion is usually made by sending a cease-and-desist letter to the entity. • The legal interest arises when the entity asks the patent holder to confirm that the acts covered by the lawsuit do not infringe their patent, but the pat ‑ ent holder fails to confirm this within a reasonable timeframe. The law also provides that, to be duly set, the deadline for the patent holder to respond must: • be in writing; • not be shorter than two months from the date of delivery of the request; • clearly indicate the actions that may infringe the patent and the extent of possible infringement; and • ask the patent holder to expressly confirm that these actions do not infringe the patent. 1.10 Doctrine of Equivalents Polish law does not expressly provide for the doctrine of equivalents. However, Polish courts sometimes refer to the doctrine of equivalents. In particular, the Supreme Court confirmed in its judgment (V CSK 149/15) that they cannot rely on a literal interpreta ‑ tion of the claims. According to the methodology pro ‑ posed by the Supreme Court, the answer to whether there has been an infringement is based on the fol ‑ lowing stages of examination: • determining the subject matter of the patent on the basis of its claims, description and drawings, taking into account the technical problem underly ‑ ing the invention and the essence of its solution, as well as the type of the protected solution; • determining the technical features of the disputed solution, including the technical problem underly ‑ ing it and the essence of the disputed solution; • determining which of the technical features of the disputed solution correspond functionally to the solutions already existing in the prior art (determin ‑ ing the closest prior art for the disputed solution); • comparing the determined subject matter of the patent with the technical features of the disputed solution to verify which features of the protected
solution have been reflected in the disputed solu ‑ tion, including their obvious equivalents; and • determining, in the event the technical features (obvious equivalents) reproduced in the disputed solution are essential to the technical solution pro ‑ tected by the patent, whether these features could have been developed by a person skilled in the art without knowledge of the patent. 1.11 Clearing the Way Polish law does not provide for an obligation to “clear the way” ahead of a new product launch. 1.12 Experts In patent infringement cases, the court uses writ ‑ ten expert opinions as evidence. The court appoints experts at the request of the parties. The parties must make such a request in the claim or the response to the claim. The party requesting the admission of an expert opin ‑ ion may suggest persons or institutions that have the appropriate knowledge, but the final decision on who will be appointed as an expert in the case belongs to the court. The parties may ask questions to the experts at the hearing if they make such a request after familiarising themselves with the expert opinion. If the party disagrees with the content of the opinion, it may file a motion for the appointment of another expert. The admission of another opinion from a dif ‑ ferent expert is subject to the court’s discretion. The parties may also attach expert opinions pre ‑ pared at their own request. Such opinions are, how ‑ ever, treated as statements of the parties themselves. Such opinions are often used by the parties in patent infringement proceedings. They allow them to better explain to the court the complex issues of a technical nature. In patent invalidation proceedings, evidence from an expert opinion is usually not admitted unless the PPO (seldom) deems it necessary. As in infringement proceedings, the parties often submit private expert opinions to corroborate their claims.
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