POLAND TRENDS AND DEVELOPMENTS Contributed by: Krystyna Szczepanowska-Kozłowska, Marcin Ziarkowski, Krzysztof Popławski and Kacper Sobolewski, A&O Shearman, A. Pedzich Sp. k.
Sufficiency of Presenting Examples of An Invention’s Practical Implementation With No Need for Creating a Physical Embodiment Over the last few years, pursuant to various NSA rulings and UPRP decisions, a new consistent approach regarding the recognition of sufficient disclosure of inventions has been developed within the Polish system. The need to establish a coherent approach that would provide legal certainty among patent system users has arisen from the debate concerning the extent of disclo - sure that should be sufficient for a reasonable patent system. Insufficient disclosure may result in positive and negative consequences. Not disclosing all the details allows a patent holder to protect infor - mation such as know-how and company trade secrets. However, providing too little information may result in a patent application being rejected or invalidating the patent. In case No. II GSK 677/20 (ruling dated 26 Sep - tember 2023), the NSA stated that presenting any examples of an invention’s practical imple - mentation and use is sufficient to meet the cri - terion of the completeness of the disclosure of the invention and its industrial applicability. The NSA emphasised that examples do not need to represent the most advantageous embodiment of the invention. Moreover, the NSA points out that the proper conduct of the evidentiary proceedings does not require an analysis of physical evidence in the form of a product embodying the invention. This is consistent with the rule that the patent holder is not obliged to utilise the solution disclosed in the patent application. Therefore, in invalidation proceedings, the UPRP does not determine whether the patent holder’s
cialist familiar with the prior art would be able to arrive at the claimed solution by addressing the problem in a professional and non-creative manner. The version of the “problem-solution” method used by the EPO is based on the “could-would” principle. The EPO considers an invention obvi - ous if the information derived from the prior art is sufficient to make the invention and simultane - ously encourages attempts to solve the problem in the manner described in the patent applica - tion. Thus, for the EPO, it is pivotal to establish if the information and tools presented by the prior art would create a strong incentive whereby an expert not only could but would solve the posed problem in the same exact way as it was dis - closed in the patent specification. In the Polish patent system, it is considered appropriate to analyse whether a specialist familiar with the closest prior art could obtain the effects achieved by the invention by modify - ing or adapting the prior art in a professional and routine manner. Therefore, in the UPRP’s policy regarding assessing a patent’s validity determi - nation, the question of whether the specialist would indeed create the solution described in the application is not a decisive factor for estab - lishing the non-obviousness of an invention. Unlike the EPO, the UPRP does not evaluate whether the information in the prior art would sufficiently motivate an expert to develop the invention described in the submitted patent application, especially when other options were also available. This approach has been noted in the court rulings and UPRP decisions that were issued in 2024.
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