IP Protection in Europe and Poland JWP Patents and Trademarks Attorneys POLAND 38,5 mln people 25% of the whole population of Central Eastern Europe 40% of Central-Eastern Europe s GDP Poland is a large country, with a population of 38.5 million people, located in the Central-Eastern part of Europe by the Baltic Sea. Its capital is Warsaw. Poles comprise 25% of the total regional population and are responsible for almost 40% of its GDP. Despite the world financial crisis, the Polish economy continues to grow dynamically and is currently ranked the 6th largest in Europe. Poland has a well-developed infrastructure, electro-technical industry and agro-food and forest industry. In recent years, due to an increase in funding for R&D, the automotive, airline, electronic, telecommunications, IT, biotechnology, biochemistry, biomedical and pharmaceutical engineering, construction, robotics and nanotechnology industries have registered significant economic growth. Almost 30% of large service centres in Poland are research and development facilities. Poland is politically and economically stable, with favourable conditions for long-term investments. In 2014 the FDI index increased by 23% in relation to the previous year. The economy in Poland continues to attract foreign investment capital. In the middle of 2013 the government decided to continue operating Special Economic Zones (SEZ) until 2026. Within the SEZs investors may obtain beneficial tariff reductions and tax exemptions. Innovative entities may apply for the status of an R&D centre, which further reduces the business costs. Due to the fact that in the EU budget for 2014 2020 financial resources are going to be distributed with priority given to the development of cooperation between science and business, and in recent years Polish research centres have considerably improved their research infrastructure due to receiving community funds, the prospects for foreign investment capital seem to be promising. In 2004, Poland became a member state of the European Union. The EU has more than 507 million citizens and its total area equals over 4 million square kilometres. At present, the EU is made up of 28 countries. Owing to its single market, the European Union has emerged as one of the most significant commercial powers in the world. The EU economy, as measured by the production of goods and services (GDP), is bigger than that of the United States. The economic policy of the European Union is aimed at maintaining its growth through investments in transport, energy, and scientific research, as well as at minimizing the negative influence of economic development on the natural environment. 1 Despite its vast internal diversity, the European Community has a unified and effective system of protection of intellectual and industrial property rights. The two main institutions responsible for industrial property protection in the EU are EUIPO (European Union Intellectual Property Office), which provides trademark and design protection, and the EPO (European Patent Office), which grants patent protection. Such a system offers European entities three different routes of obtaining protection for their intellectual property rights, depending on their individual goals and business needs. They are: the national route (whereby a patent application is filed to the patent office of the particular country); the regional route (a validated European patent, which is granted in selected countries); and the international route. A new fourth route will soon be introduced - the unitary patent, which is to lower costs and improve the procedure of granting patent protection in the EU. In 2015, EU institutions reported nearly 279,000 patent applications (EPO), 130,000 applications for trademark registration, and 97,500 applications for design registration (EUIPO). Almost 35% of the European patent applications come from Asian countries (18% Japan, 11% China 6% South Korea). In 2015, over 20,270 patent, utility model, trademark, and design applications under the national procedure were filed with the Polish Patent Office. In Poland, 929 patent attorneys work on IP protection matters, 291 of whom are authorized to handle proceedings before the European Patent Office. 279,000 (patent) 108,515 (trademark) EPO and EUIPO applications in 2015 (source: EUIPO) USA 24% 86,127 (design) Others 6% Japan 18% Other EPO States 35% European patent fillings (source: EPO) China 11% Republic of Korea 6%
Patents Documents to file The minimum documents required for filing a Polish patent application are: - a patent request form and descriptions of the invention; - patent claims, an abstract, the title of the invention, and drawings, if required. Duration of the filing procedure The filing procedure lasts approx. 4 to 6 years. The Polish Patent Office is obligated to publish the patent application within 18 months from its submission date. Nevertheless, publication may be expedited upon the applicant s request this costs 60 PLN and may be filed within 12 months from the filing date. Together with such a request for early publication, the applicant may also request to speed up the search procedure (this request must be justified, however). During the filing procedure foreign entities need to be represented by an agent, i.e. a registered Polish patent attorney. Costs (official fees) 550 PLN fee for the patent application. 550 PLN + 50% when the application covers more than two inventions. 25 PLN per page when the specifications, claims, and drawings exceed 20 pages. 15,000 PLN the sum of all annuity payments from the 1st to the 20th year of protection. 1 USD = approx. 4 PLN, 1 EUR = approx. 4,2 PLN Patent duration The term of a patent is 20 years from the filing date, provided that the annuity payments are made regularly. In particular cases, the right of protection can be extended for medicinal products and plant protection products by filing an application for the granting of supplementary protection rights (SPCs), which are recorded in the Patent Register. Patent protection in Poland may also be obtained via the registration of a European patent and its validation in Poland. European patent The procedure for obtaining a European Patent is regulated under the European Patent Convention. The granted European Patent may be valid as regular national patent on the territory of each designated country. A European regional patent application is filed with the European Patent Office and the patent protection covers all the member countries of the European Patent Convention. Unitary patent system The unitary patent is a system of industrial property protection in the European Union, the aim of which is to improve the procedure of granting patents in the EU as well as to lower its cost, especially for small and medium-sized enterprises and research units. The unitary patent will become a convenient tool of patent protection for entrepreneurs, granting protection in 25 member countries of the EU and creating a unified jurisdiction for patent disputes. The European patent is automatically valid on the territory of Germany, France, Switzerland, Liechtenstein, Monaco and Great Britain; however, if the applicant wishes to obtain patent protection in other European Convention member countries it is necessary to undertake a procedure of validation, which involves filing a corresponding request to the designated country, translating documents into the relevant national language. In all countries where such European patent is to be valid maintenance fees are payable. Applicants originating from outside the EU must be represented by a professional representative in all proceedings when applying for a European Patent. Patent Validation The translation of the European Patent specification into Polish must be provided within 3 months from the publication of the European Patent. Foreigners residing outside Poland must perform European Patent validation in Poland through an agent, i.e. a registered Polish patent attorney. 2 Under the Agreement between the Polish Patent Office and the Japanese Patent Office (from 31 January 2013) and the State Intellectual Property Office of China (from 1 July 2013) as well as The United States Patent and Trademark Office (from 1 November 2014), a Polish applicant may use an expedited procedure for granting a patent in Japan, China, and the USA based on the corresponding Polish patent application and PPH procedure.
Copyrights What is the relevant legislation? In Poland the basic legislation referring to copyrights is the Act of 4 February 1994 on Copyright and Related Rights (the Copyright Act) (consolidated text: DzU of 2006, No. 90, with subsequent amendments), which defines the subject matter of copyright protection, its scope, and instruments of protection against infringements. Who may claim copyrights protection? In general, the author claims the rights derived from the Copyright Act. It is the author who decides when, through which kind of claim, and to what extent he or she will enforce his or her rights. However, in addition to the author, other entities may enforce any rights resulting from the Copyright Act. In this respect, Article 67(4) provides the basis for claiming protection of author s economic rights under an exclusive licence, provided that the claim refers to the use of a work covered by an exclusive licence agreement and the agreement does not contain exclusions as regards the protection sought by the licensor. Organisations for the collective administration of copyrights or neighbouring rights may claim remuneration and fees due to the rights holders. How long does copyright protection last? The work shall enjoy copyright protection from the time it is established, even though its form may be incomplete. As a rule, the copyrights shall expire 70 years after the death of the author. In the case of joint works, the copyrights shall expire 70 years from the death of the last surviving co-author. The 70-year time limit cannot be shortened or extended. Is there a centralised copyright agency? There is no centralised copyright agency in Poland. However, there are several organisations of collective administration of copyrights or related rights that act as associations, for example: ZAIKS the largest Polish organisation of collective administration that groups together authors; ZPAV acts on behalf of producers of phonograms and videograms; Polska Książka acts on behalf of publishers and authors. What types of works are subject to copyright? The subject matter of copyright shall be any and all manifestation of creative activity of an individual nature, established in any form, irrespective of its value, designation, or manner of expression. This means that work of a non-material interest that fulfils each of the following requirements is protected on the grounds of the Copyright Act: it is the result of the work of the author; it is a manifestation of creative activity; and it possesses an individual nature. What is excluded from copyright protection? Copyright shall not cover: legislative instruments and their official drafts; official documents, materials, logos and symbols; published patent specifications and industrial design specifications; simple press information; and works that do not fulfil the prerequisites referred to above. Do the doctrines of fair use or fair dealing exist? In Polish copyright law there are provisions defining the permissible use of protected works. Under these provisions, it shall be permitted to use, free of charge, work which has already been disseminated for purposes of personal use without the permission of the author. This provision does not allow building of constructions according to other authors architectural works as well as architectural and town planning works, or to use electronic databases showing the features of a work unless this applies to the user s own scientific use and is not connected with any profit-gaining purposes. Is there a requirement of copyright notice? Under Polish copyright law there is no requirement of copyright notice. On 22 January 2015 the Court of Justice of the European Union made an interesting decision on the exhaustion of rights (case no. C-419/13). According to the Court s ruling, the exhaustion of the distribution right does not apply in a situation where a reproduction of a protected work, after having been marketed in the European Union with the copyright holder s consent, has undergone an alteration of its medium, such as the transfer of that reproduction from a paper poster onto a canvas, and is placed on the market again in its new form. 3
Unfair competition What is the relevant legislation? The legislation referring to unfair competition is The Polish Act of 16 April 1993 on Combating Unfair Competition. Both entities which have their industrial property rights registered as well as those that don t possess such rights may seek redress through the courts if they become victims of unfair competition. What does unfair competition mean under the Polish law? According to the Polish Act on Combating Unfair Competition, an act of unfair competition is an action contrary to law or good manners which threatens or violates the interests of another entrepreneur or a customer. Examples of this include: misleading product labelling finished products imitation company secrets violation misleading advertisement. Which institutions deal with disputes relating to unfair competition? Such cases are recognized by courts of law. In the case of violations, the court may in particular: prohibit certain actions order the offending party to pay reparations or return unjustified benefits force a party to publish specific statements. The act also provides for criminal proceedings to be initiated against a person committing an act of unfair competition in particular circumstances. Such proceedings may only, however, be initiated at the request of the injured party. According to the Polish case law, registration of a trademark does not provide protection against unfair competition claim. The provisions of the Act on Combating Unfair Competition are solely applicable to entities actually operating on the Polish market. Establishing a subsidiary on the Polish territory is not equivalent to a foreign entrepreneur doing business in Poland. In such a case, only the subsidiary is recognized as an entity operating in Poland and solely such a subsidiary may initiate proceedings under the Act on Combating Unfair Competition. Mediation What is the legal basis for Alternative Dispute Resolution in Poland? Mediation, as an alternative for resolving disputes, has been present in Polish law for many years. However, on January 1, 2016, novelization of the civil code came into force considerably simplifying the use of mediation for the participants of court proceedings in civil and commercial cases, including disputes concerning intellectual and industrial property. Advantages of mediation proceedings Characteristic of mediation proceedings: voluntariness, confidentiality, impartiality and neutrality significantly lower costs in comparison to litigation proceedings shorter duration of the proceedings (mediation: 2-6 months vs litigation: 2-6 years). A novelty to the provisions concerning mediation has introduced an advantage in subsequent legal proceedings when a plaintiff makes an attempt to amicable resolve the matter before filing a statement of claim. Then, while adjudicating about costs, the Court would take this fact into account and increase the costs awarded to the party accordingly. Costs of mediation proceedings They may vary depending on the ongoing stage of mediation: 1. They can be indicated by the Court during the court proceedings (the Court designates a person from the list of mediators of the court and the fees are determined in the regulation); or 2. If it is a non-judicial resolution of the dispute, then the mediation costs are calculated by a mediation centre, e.g. JWP. Mediation concerning intellectual property Mediation relating to intellectual property cases includes infringement of trademarks, patents, industrial designs, utility models, geographical indications, names of plant varieties, domain names, and copyrights. Disputes concerning intellectual and industrial property are usually complex and time-consuming. Sometimes, they are concluded when protection of a patent or utility model is soon to expire or an entrepreneur is in the process of rebranding. In such cases, the use of mediation can help the parties to save a lot of time and significantly reduce costs of the proceedings. 4
Trademarks Duration of the filing procedure It takes approx. 6-8 months from the date of application before a trademark becomes registered. Costs (official fee) 550 zlotys fee for filling a trademark application in up to three classes. 120 zlotys fee for each additional class. 400 zlotys fee for registration of the trademark for 10 years for each class up to three classes once the decision to grant the right of protection for a trademark is received. 450 zlotys fee for registration of the trademark for 10 years for each additional class. 90 zlotys fee for publication of a trademark. Duration and maintenance of registration The protection of a registered trademark in Poland begins on the date on which the application is filed with the Polish Patent Office and lasts for 10 years. During the period from application to the obtaining of protection, trademark is under temporary protection. The right of protection for a trademark may be extended, at the owner s request, for all or part of the goods for additional 10-year periods. The request for an extension of the right of protection with a fee should be filed before the end of the protection period, but not earlier than one year prior to its expiration. It is acceptable to file a request for an extension of the right of protection for a trademark after 10-year protection period, but only during the six months after the expiration of the renewal period and subject to the payment of an additional fee. European Union Trademark The European Union Trademark (EUTM) system provides for one single registration procedure, and grants its owner an exclusive right in all Member States of the European Union so it also covers territory of Poland. The EUTM is obtained by registration in European Union Intellectual Property Office (EUIPO). EUTM is valid for a period of 10 years and may be renewed indefinitely. Applicants outside EU must appoint an agent, registered in one of EU state members. The validity of a trademark in Poland may be revoked in case it has not been used within 5 years from registration. Since April 15, 2016 trademark registration procedure in Poland has been changed into opposition system. Until then, the Polish Patent Office had examined all prerequisites of trademark registration (both relative and absolute grounds for refusal of trademark registration). It means that the PPO had also checked whether there exist earlier trademarks, which are similar or identical to the filed mark, and had refused to grant protection in cases where a filed trademark had been found to be misleadingly similar to prior trademarks. Now, the Patent Office examines only absolute grounds and owners of earlier rights need to file opposition to prevent later identical or similar registrations. The PPO informs trademark applicants about potential conflicts with prior trademarks by sending them the search report. The report, however, is not sent to holders of prior trademarks. Thus, the holders of these rights shall remember about watching their trademarks. 5
Industrial designs Filling documents The industrial design application in Poland must contain: - request containing at least indications concerning the applicant, a definition of the subject-matter of the application and a petition for the grant of a right in registration; - illustration of the industrial design, - description, describing the essence of the industrial design. One application may include up to ten design variants, sharing significant common features. Duration of the registration procedure It takes approx. 7 months to register an industrial design in the Polish Patent Office. Costs 300 zlotys fee for filling an industrial design application. 70 zlotys fee for publication. If no objections are found, a decision on the granting of registration will be made, and applicant will be invited to pay within three months the fee for the first protection period of 5 years from grant and the publication fee. Industrial design protection validity Total term of the industrial design patent validity in Poland is 25 years, paying the renewal fee every 5 years. Community Design The industrial design protection in Poland may also be obtained via registration of a Community Design. Registration of the Community Design is conducted by filing one application to EUIPO and is valid in all 28 European Union countries. Community Design application may include several design variants in one application. Applicants outside EU must appoint an agent, patent attorney that is registered before any state EU member. Because of the recent amendment to the Industrial Property Law Act, as of 1 December 2015 it is possible to register industrial designs under the international procedure with the designation of the territory of Poland. Additionally, the amendment has also simplified the design registration procedure by abolishing the requirement to file a design description. 6
JWP Patent & Trademark Attorneys JWP Patent & Trademark Attorneys is part of the JWP IP Law Group and is considered one of Poland s leading intellectual property law offices. It is a firm offering comprehensive services, that assists local and international businesses in protecting their intellectual property including trademarks, industrial designs, inventions, utility models, geographical indication, internet domains, copyrights, and business names. Number of Employees 70 Number of Practitioners 30 Number of Clients 5,000 Number of Cases 26,000 Specialising in IP assistance in Poland and Europe JWP Patent & Trademark Attorneys offers companies a full range of IP protection services, including IP searches, filing and prosecution services, conducting contentious proceedings, updating records and renewals, managing IP portfolios, undertaking due diligence, assisting with licensing, negotiating and drafting agreements, organising mediation sessions, and providing strategic IP management advice. The company also assists with civil and criminal proceedings related to IP infringement, unfair competition, and counterfeiting. The firm s large team of specialists combines expert knowledge and experience with professional qualifications, which enables us to conduct cases before the relevant courts and administrative bodies in both Poland and Europe. More than a half of our clients are foreign entities. For our overseas clients we provide high quality services related to IP searches, filling, prosecution and litigation both in Polish and European procedures. Our European patent attorneys have the power to act as professional representatives for people and companies not having either their residence or place of business within the territory of an EU member state. Almost 25 years of experience The firm was established in 1992, therefore we have accumulated almost 25 years experience in finding and adopting the optimum IP management strategy for each client. In the process of selecting IP instruments we always take into account the specific field, business profile, and business objectives of the entity as well as the markets in which the entity is planning to operate. We offer every available tool to facilitate and speed up the proceedings for our clients, i.e. while applying for EUTM, JWP uses the accelerated Fast Track procedure, which shortens the formal examination procedure and applications more quickly reach the second step in the registration process, the publication of the application. Moreover, for patents we submit online applications to the EPO, which pushes the procedure forward more rapidly. We provide professional support for enterprises planning their investments in Poland or considering whether to cooperate with Polish firms. As we act in a group of three entities (JWP Group) we can pursue our clients objectives in synergy, ensuring the assistance of JWP Legal in the fields of industrial property rights, copyrights, unfair competition, company law, media law, advertising law, internet law, contracts, and technology transfer. One of the biggest IP law firm in Poland The company s main office remains in Warsaw, the capital of Poland, but we also have three other regional offices located in economically important regions of the country one in the south in Cracow; the second in Wrocław, in Silesia, a highly industrialized area with a significantly developed tech and IT sector; and the third in Gdańsk, a large city by the sea and the capital of the shipbuilding and energy industries. The purpose of creating regional JWP offices was the need to be as close to the key economic sectors and potential clients as possible. JWP Patent & Trademark Attorneys is consistently ranked among the best Polish IP protection companies in rankings prepared by Intellectual Asset Management and World Trademark Review magazines, and is included in Managing IP s list of IP Stars. In 2013 and 2014 Dorota Rzążewska, Managing Partner of JWP Patent & Trademark Attorneys, received the prestigious Client Choice Award established by International Law Office (ILO) and Lexology magazines. 7 JWP Patent & Trademark Attorneys www.jwp.pl Sienna Center ul. Żelazna 28/30 00-833 Warszawa Poland T: +48 22 436 05 07 F: +48 22 436 05 02 E: info@jwp.pl