POLAND TRENDS AND DEVELOPMENTS Contributed by: Krystyna Szczepanowska-Kozłowska, Marcin Ziarkowski, Krzysztof Popławski and Kacper Sobolewski, A&O Shearman, A. Pedzich Sp. k.
products sold on the market conform to the specifications and construction described in the patent specification. The assessment of the industrial applicability of the invention is made solely in relation to the patent’s disclosure in the documents that have been submitted during the application process. The perspective of the product’s physical form resulting from the inven - tion’s specification is irrelevant to the outcome of the assessment process. Applicant’s Reference to Their Previous Non- published Applications The recent ruling issued by the NSA in case No. II GSK 1034/20 (dated 16 April 2024) clarified the reasons why the state of the prior art is and should be assessed differently for the purpos - es of examining the novelty of the submitted invention (Article 25 of the IPL) and differently to examine the inventive step and the non-obvi - ousness of the invention (Article 26 of the IPL). The importance of this judgment is significant, especially for those users of the patent system who are seeking a favourable UPRP decision regarding the granting of a new patent but have previously filed patent applications for similar inventions. The main legal issue to be resolved was wheth - er the information disclosed by the applicant in earlier unpublished applications became part of the prior art by virtue of its mere indication in the subsequent application. The NSA resolved this issue negatively: from the perspective of assessing the inventive step, this information will not become part of the state of the art until the UPRP publishes it. When evaluating the inventive step, the state of the art presented in a previously submitted application that has not yet been published by
the UPRP is not taken into account, even if the applicant is completely aware of the content of that earlier application. In its justification, the NSA explained that the interpretation of the IPL’s provisions, which leads to the conclusion that the applicant cannot refer to their previous applications and previously submitted documents in a new patent applica - tion, even though they have not been published in the UPRP’s bulletin, is erroneous. Therefore, there is no legal basis for the UPRP to question this practice. The NSA indicated that a patent can be granted for an invention that does not exhibit an inven - tive step in relation to an invention previously submitted but not yet published. The justification for such regulation is to create conveniences for entities conducting research on improving inven - tions, which can be successively submitted for patent protection without the risk of challenging their inventive step and, thus, their patentability. Moreover, the mentioned regulation does not block the possibility of patenting inventions by other entities conducting appropriate research and submitting inventions entering the state of the art in close temporal proximity. This regula - tion is an exception to the prevailing principle in patent law of “first come, first served” and applies only to the issue of the inventive step of a given invention. At the same time, there is no risk of granting the same person multiple patents for very similar or even identical solutions because the appli - cant must also meet the novelty requirement, to which the “first come, first served” principle fully applies. Granting a patent requires meeting all the conditions for its granting. Therefore, if a later submitted invention were to be considered
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