Patents and Utility Models

Patenting procedure, as well as patent invalidation procedure, usually starts from the search in state of the art. In case of new patent application it is necessary to make references to previous publications in the description of the invention, which force an applicant to search for technical solutions similar to the one being a subject of the application. The same action is performed by experts of the Patent Office during the examination of the application. Publications found during this step may prevent the patent from being granted. Even when patent has been already granted, it should be expected that competitors perform their own search in order to invalidate the patent. It often happens if the patent brings real economic benefits. So it is worth to perform the search carefully before the application is filed in order to avoid an unpleasant surprise in the future.

Assistance in designing patenting strategy

The choice of patenting strategy is crucial for effectiveness of the future patent protection, as well as for economic effectiveness of the whole patenting process. In case of emerging technologies it is to be decided whether, what, where and how to patent to obtain maximal protection with reasonable costs reasonably distributed over time. We assist you in making such decisions.

Specification drafting and first filing

We draft patent and specifications for both Polish (naturally we can help with drafting utility model application in Poland too) and European applications. We can also help with first filing in Poland to comply with national security regulations. European first filing may also comply with national regulation providing it is submitted via Polish Patent Office.

European patent applications

We are more than willing to assist not only with European first filings but also with regional – EP phases entries and subsequent prosecution. Please use contact form if you need a quotation.

International patent applications

PCT application cost depends on the country of filing and legal status of the applicant. Polish physical persona acting as applicant is entitled to 90% filing fee discount in PCT proceedings. Perhaps this is why some of large international companies request assignment of rights from their local employees and subcontractors after international filing (as opposed to assignment before filing). In such scheme, however, national security regulation should be observed.

Obtaining protection in Poland: national filings, PCT entries and Validations of granted EP Patents

There is a number of ways for obtaining a patent valid on the territory of Poland. The simplest and cheapest (at least usually and providing protection nowhere else is sought) one is to file an application directly in the Polish Patent Office.

Direct PCT->PL route is also available. We can help with national phases in Poland as well as with European ones.
The route used most frequently is EP route. European patent once granted can be validated in Poland (please note that Poland at present is not a contracting state of Unified Patent Court agreement and hence so called “Unitary Patent” is at present not an option). Regarding European patent validation attention should be paid to following issues:

  • Submission of translation of whole European patent specification to polish is required under A65(1) EPC for this patent to be effective on the territory of RP
  • Should it happen that the scope of protection defined by translated claims is narrower than the scope of protection defined by claims in the language of proceedings polish text is regarded as authentic for infringement matters under A 70(3).
  • As claims are to be interpreted with reference to the description, there is a line of interpretation that nullifies scope of protection when serious translation errors of claims occurs or serious terminological discrepancies between claims and description occur. Should translated claims be recognized as incomprehensible the scope of protection might be regarded as null.
  • Naturally in such event correction option under A70(4)a is available for the patentee.
  • However, correction is effective after publication of corrected specification by PPO undar A70(4)+A67(3)a (Ustawa o skutkach patentów europejskich – Art. 7 ust. 3)
  • There is no legal time limit for PPO to publish furnished correction of translation it may take several months.
  • Hence, inaccurate translation not verified by patent professional results in a risk of serious delay of the infringement proceeding and limiting a period in which infringement is considered to have taken place.

Prosecution before the Polish Patent Office and, if necessary proceedings before the administrative courts

Polish national filings and PCT national phase entries are prosecuted before Polish Patent Office. Polish Patent office handles also invalidation case of European pattens. When appeal means before Polish Patent Office are exhausted a complain can be filed to Administrative Court. Decision of Administrative Court can be appealed with Supreme Administrative Court. We can help you before all instances.

Defense before the Patent Office in cases regarding opposition or invalidation

A patent for an invention is a tool of protection for the patentee, but also an obstacle to his/her competitors. The natural reaction to an obstacle is to try of remove it. To achieve this goal in case of a patent, one can file an observation after the application is published, file an opposition or request for invalidation of the patent. There are also cases of patents that do not meet the statutory conditions, but even patents on new and non-obvious technical solutions are viciously attacked, if the related solutions are profitable. We help in both of these situations. Please note that both of them are likely to reach Administrative Court or Supreme Administrative Court.