Jarosław Kamiński

Attorney at law (Poland)
Associate Partner
Phone: +48 22 244 00 27

New regulations on patents have been in forcesince 1 December 2015. Further changes will go live on 15 April 2016 to cover trademarks.

The new provisions regulate in detail the granting of patents for inventions, the protection rights of utility models and trademarks, as well as the protection rights to industrial designs, integrated circuit layout designs and geographical mark. They also change the procedure for obtaining trademark protection. 

The changes which have been in force since 1 December 2015 result from the statute of 24 July 2015 amending the Industrial Property Act and some other acts. Please find below an overview of regulations which we believe to be particularly important for enterprises.

Getting patent protection in Poland will be easier

The novelty requirement for an invention has been relaxed. Now it will be possible to obtain a patent also for as long as six months after the invention has been disclosed by a third party if the disclosure is demonstrated to be an obvious abuse against the enterprise which registers the invention with the Patent Office. The terms "abuse" and "obvious" have not been defined and are yet to be clarified in practice. Nevertheless, this change simplifies the application for patent protection, especially for those enterprises which did not secure themselves against disclosure of an invention by third parties (e.g. by means of confidentiality agreements). 

Letter of consent

Enterprises have long been awaiting the introduction of the so-called letter of consent. So far, they could not register a trademark which was similar to a mark already applied for or registered to another person. In such situations the Patent Office was obliged to refuse the application. Now, this will be possible if another person gives their consent in writing.

Joint protection

Another novelty is the cumulative protection of industrial designs and proprietary copyrights. The copyright protection of works which incorporated a registered industrial design used to expire together with the registered right to that design. Following the amendment, industrial designs which are at the same time works in the meaning of the copyright law will be protected also after the protection of a registered industrial design expires. This, however, prompts a risk of claims against enterprises that want to use designs which are no longer protected. Therefore, you should keep in mind that your use of designs should be regulated also in terms of copyright law. 

Industrial designs – applications with WIPO

The new law allows owners of industrial designs to obtain protection in the countries they specify in a single application to the international office of the World Intellectual Property Organization (WIPO) under the so-called Hague system. This regulation is the same as the international regulations concerning trademarks applied for under the Madrid system. 

Transitional regulations

Please note that the new regulations will not apply to proceedings launched before 1 December. The legal requirements for obtaining a patent, a protection right or a registered right are evaluated on the basis of provisions which were in force on the day the invention, utility model, trademark or integrated circuit layout was filed with the Patent Office. 

The changes that are about to enter into force on 15 April 2016 follow from the statute of 11 September 2015 amending the Industrial Property Act. The most important change is the introduction of a new procedure (system) for granting of protection rights for trademarks which bases on the possibility to file objections. 

3 months for objections against a trademark application

An old beneficiary will be able to object a new application for a trademark within 3 months of publication of the application for such a trademark. This deadline is definitive. The new regulations lay down the required elements of an objection, and how it is to be filed and reviewed. If the objection is considered justified, the protection right for the trademark will be refused. The Patent Office issues its decision after reviewing the objection. The parties may apply for a second review. Such re-applications will be considered by dispute resolution boards.

Information on the existence of similar trademarks

Pursuant to the new regulations, the Patent Office will be obliged to inform the applicants about identical or similar trademarks which may trigger an objection and, therefore, lead to a refusal of the trademark protection right. This way, the applicant will learn about potential obstacles to the registration resulting from third parties’ rights. 

The old regulations apply to trademark applications as well as objections against trademark registrations which were initiated or were not closed before 15 April 2016.

If you would like to protect your industrial property, we offer you our help in the application of the Industrial Property Act as well as necessary advice on the proceedings before the Patent Office. 

We would be glad to provide you with more information if you are interested in this or other issues in the area of intellectual property law in Poland. Our attorneys-in-law also offer legal advice in Poland on other issues. They are at your disposal in Rödl & Partner offices in: Gdansk, Gliwice, Cracow, Poznan, Warsaw, Wroclaw.

31.03.2016 r.