POLAND TRENDS AND DEVELOPMENTS Contributed by: Krystyna Szczepanowska-Kozłowska, Marcin Ziarkowski, Krzysztof Popławski and Kacper Sobolewski, A&O Shearman, A. Pedzich Sp. k.
ing insufficient time to prepare a well-founded PI application. Contradictory nature of PI proceedings The amendments have shifted the nature of PI proceedings to be more adversarial. Courts are generally required to hear both parties before granting a PI, except for cases where immedi - ate action is necessary or when the injunction involves actions fully executable by a bailiff. Unfortunately, this change has significantly pro - longed the duration of proceedings for granting interim relief, which by definition should be swift, and has caused the nature of PI proceedings to be distorted. In the current legal environment, there is a concern that the infringer will learn about the application for interim relief in advance and may, for example, transfer goods from one warehouse to another or transfer their ownership to another entity. This would make, for instance, the seizure of infringing products within the PI proceedings much more difficult, ultimately leading to a decrease in the effectiveness of the patent enforcement system in Poland. For the reasons described above, the IP court has adopted a very cautious and conservative approach to granting PIs in patent infringement cases, especially in situations where any invali - dation proceedings are pending against the pat - ent. Unfortunately, the aforementioned changes regarding the requirement for the IP court to consider the likelihood of patent invalidation have caused a significant breach in the principle of bifurcation that is in force in Poland, where the IP court decides on patent infringement cases, and the UPRP resolves issues related to pat - ent invalidity. Under the current legal framework, patent enforcement proceedings before the IP court increasingly involve issues strictly related to the alleged invalidity of the patent, significant -
ly prolonging the duration of patent infringement cases. We fear that the above-presented changes in the KPC will encourage Gx entities to file more and more invalidation requests, regardless of the existence of any substantive grounds for their submission, solely to convince the IP court that there are no grounds for granting a PI due to the likelihood of patent invalidation — which, despite the filing of an invalidation request, is often only theoretical and lacks substantive jus - tification. Patent Validity Assessment Based on National Regulations The NSA confirmed that the “could-would” prin - ciple adopted by the European Patent Office (EPO) as part of the “problem-solution” method used for analysing patent applications is not binding on the UPRP because the assessment of patent validity is based on national regula - tions. The NSA accepted the UPRP’s legal inter - pretation of the Industrial Property Law of 30 June 2000 (the IPL). A recent NSA ruling (dated 4 April 2023, II GSK 1534/19) stated that the UPRP had properly used the “problem-solution” approach to objec - tively assess the inventive step and avoid ana - lysing prior art ex post facto. In its justification, the NSA clarified that the UPRP’s approach is different and more stringent than the EPO’s but is not erroneous. By using the “problem-solution” method to assess the criterion of non-obviousness of the solution, the UPRP conducts a three-stage assessment of the inventive step of the disput - ed invention. Firstly, it identifies the closest prior art, then it defines the problem that should be solved, and lastly, it considers whether a spe -
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