This country-specific Q&A provides an overview to intellectual property law in Poland.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
- Supplementary protection rights (SPC - for medicinal products and plant protection products)
- Utility models
- Trade secrets (know-how protected under unfair competition law)
- Improvement proposals (limited right to compensate inventors of solutions which are not eligible for protection as patentable inventions, utility models, designs, or semiconductor topographies)
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
- Trade marks (including collective trade marks and collective guarantee trade marks – similar to certification and association marks, respectively, under Polish national patent laws), association marks and certification marks (protected under EU-wide regulations)
- Business names (firm names – names of businesses which have limited protection)
- Designations of origin
- Geographical indications
- Traditional specialities
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
- Copyright-related rights: performers' rights, phonogram (sound recording) and videogram (first fixation of a sequence of moving images, such as a film) producers' rights, broadcasters' rights, first publication rights (publishers' rights to a first publication of a previously unpublished work where the copyright protection had expired), rights to critical and scientific publications (publishers' rights to critical and/or scientific editions of works where the copyright protection had expired)
- Designs (registered and unregistered)
- Semiconductor topographies
- Plant varieties
- Trade secrets
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
a) Patents are protected for up to 20 years from filing, provided that renewal fees are paid and they are not invalidated.
b) Supplementary protection rights may be obtained to extend protection of certain patentable inventions by up to five years, with an additional six month period for medicines intended for paediatric use (paediatric extension).
c) Utility models are protected for up to 10 years from filing, provided that renewal fees are paid and they are not invalidated.
d) Trade secrets remain protected as long as they are kept secret.
e) Improvement proposals do not have any specific duration because they only entitle the inventor to receive remuneration from the business which uses them, in accordance with such businesses internal regulations.
f) Trade marks are protected for 10 years from the date of filing. Trade mark protection may be extended indefinitely (for subsequent 10-year periods).
g) Business names are protected indefinitely (for as long as a business uses a particular name).
h) Designations of origin, geographical indications, and traditional specialities are protected indefinitely.
i) Economic copyrights are in force for 70 years after the end of the calendar year of the author's death. If the author is unknown or the copyrights originally belong to a person other that the author, then the term of protection is 70 years from the date of the work's first dissemination or creation. The author's moral rights do not expire.
j) Related rights: performers' rights, phonogram and videogram rights, and broadcasters' rights are in force for 50 years after the end of the calendar year of the first performance, fixation, or broadcast, respectively. First publication rights are protected for 25 years from such publication, and rights to critical and scientific publications are protected for 30 years from publication.
k) Registered designs are protected for up to 25 years from the date of filing, in five-year periods (as long as they are renewed every five years). Unregistered designs are protected for 3 years from the date the design was first made available.
l) Semiconductor topographies are protected for 10 years after the end of the calendar year of the earliest of: (i) the date of filing for protection, or (ii) first placement of such topography on the market.
m) Plant varieties are protected for 30 years (for hops, potatoes, wine and tree species) or 25 years (for other plant varieties) from the date of granting protection. For community plant variety rights, the European Council may extend these terms up to a further five years.
n) Databases are protected for 15 years after the end of the calendar year of their preparation, unless a particular database qualifies as a copyrighted work – then, it is protected in the same way as such works.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
a) For patents, utility models and designs, the creator obtains the right to obtain the relevant rights. Generally, when such subjects of rights are created while performing obligations under an employment or other contract, then the employer or the ordering party is entitled to these rights, unless the parties stipulated otherwise.
The rights to obtain each of these rights are separate from patent rights, utility model rights, or design rights (those obtained through registration). These are originally granted to the party who filed for protection, provided that such party had previously acquired the rights to obtain protection.
b) Supplementary protection rights are granted to the owner of the patent.
c) Trade secrets are protected under unfair competition regulations. The entrepreneur is protected against violations of his or her trade secrets, but there are no provisions that regulate the entrepreneur as the first owner of them.
d) The creator of an improvement proposal is entitled to obtain remuneration if the business uses it.
e) In respect of trade marks, the first owner of the mark is the applicant.
f) Business name protection applies to each business acting under a specific name. The business name is not exclusive – several businesses may operate under the same name, although the names should differ for businesses operating on the same market.
g) Designations of origin, geographical indications, and traditional specialities are not "owned" by anyone in a typical way, as they may be used by anyone whose products comply with the relevant requirements.
h) The primary owner of copyright is the author. For computer programs, the employer is the primary owner of copyright of the work created by an employee in performance of his or her duties. With regard to other copyrighted works, the employee remains as the copyright's primary owner, although an employment contract may stipulate that economic copyrights are automatically transferred to the employer once a work is created.
i) Related rights:
The first owner of a performers' right is the performer. Phonogram and videogram rights are originally vested in the producers (it is assumed that the producer is the person or business under whose names the phonogram/videogram has been made for the first time), and broadcasters' rights are owned by the original broadcaster. Publishers are owners of first publication rights, as well as the rights to critical and scientific publications.
j) In respect of semiconductor topographies, the right to obtain a registration right is granted to the creator, creator's legal successor or the person to whom the creator is bound by an employment or other contract, or the person who assisted the creator in creating the topography.
k) The holder of the plant variety protection is the breeder, understood as a the person who bred or discovered and developed the variety, but also a legal successor of such person, as well as his or her employer, or the party of the contract under which a plant variety has been bred or discovered.
l) The first owner of database rights is its producer, i.e. person or entity which bore investment risk in connection with the creation of the database.
Which of the intellectual property rights described above are registered rights?
- Supplementary protection rights
- Utility models
- Trade marks
- Designations of origin, geographical indications, and traditional specialities
- Registered designs
- Semiconductor topographies
- Plant varieties
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Natural and legal persons may apply for registration for most of these registered rights. For designations of origin, geographical indications and traditional specialities, these can be obtained by groups of producers or processors of particular products.
Polish national patents, SPCs, utility models, trade marks, designs, and semiconductor topographies are registered before the Polish Patent Office. In general, applying for each of these rights requires filing a dedicated form and paying the relevant fees.
It is also possible to obtain patent protection in Poland under the European patent system at the European Patent Office (EPO) after subsequently validating such patent in Poland within six months after the publication of the decision on the grant of the European patent. Poland is also a party to the Patent Cooperation Treaty and thus Poland can be a designated country in the PCT patent application filed through the World Intellectual Property Organisation (WIPO).
Trade marks and designs may also be registered before the European Intellectual Property Office (EUIPO), granting them EU-wide protection.
Poland is also a party to the Madrid Association and the Hague Convention, thus international trade mark and design applications designating Poland are acceptable as well.
Polish national plant varieties are registered by filing an application before the Central Research Centre for Cultivar Testing (COBORU). Plant varieties may be also registered before the Community Plant Variety Office (CPVO) for EU-wide protection.
How long does the registration procedure usually take?
There are several factors which may affect the length of registration proceedings. In cases where third parties are involved (e.g., by filing oppositions), registration may take significantly longer.
Relatively simple patent registrations usually take two to three years for the Patent Office’s final decision to be issued, depending on the type of invention that the application covers.
Utility models are usually registered in three to four years from filing, but the term may vary greatly from case to case.
A national trade mark is usually registered within six to nine months from filing, while for an EU trademark the term is usually around six months.
National designs are usually registered within six months from filing.
There are very few registrations of semiconductor topographies in Poland, so it is difficult to state how long a 'typical' registration procedure takes. Some most recent applications were registered in around six months.
Do third parties have the right to take part in or comment on the registration process?
The Patent Office publishes information that the patent application has been filed, and third parties may submit reservations concerning any circumstances preventing the patent's grant. A similar rule concerns new trade mark applications. Third parties also have the possibility to file oppositions and motions for the invalidation of registered IP rights (see question 27 for details).
What (if any) steps can the applicant take if registration is refused?
The decisions of the Patent Office in registration proceedings are subject to request for re-examination which then subsequently may be appealed in administrative courts, while the decisions concerning plant varieties, issued by the Director of the Central Research Centre for Cultivar Testing, can be contested by filing an appeal before the Minister in charge of agriculture, and then – to the administrative courts.
What are the current application and renewal fees for each of these intellectual property rights?
For patents and utility models, the application fee is PLN 550, but the fee is increased by PLN 25 for each page of the description or drawings over 20 pages. The periodic fee, payable to renew protection increases over the term of protection. For patents, the periodic fee is PLN 480 for the first three years of protection, and then from PLN 250 up to PLN 1550. For utility models, the periodic fee is applicable in two- and three-year periods and ranges from PLN 250 to PLN 1100.
Trade mark applications are subject to a fee of PLN 450 (for one class), and it increases by PLN 120 for each additional class. A renewal application is subject to a fee of PLN 200, and the renewal fee is PLN 400 for each class for ten years of protection.
The application fee for registering a design is subject to a fee of PLN 300. Periodic fees are payable in five-year periods and range from PLN 150 to PLN 2,000.
Application for a geographical indication is subject to a fee of PLN 300, and a one-time fee for obtaining protection is PLN 1,000.
The application fee for a semiconductor topography is PLN 250. The periodic fee for the first five-year term of protection is PLN 550, and for another five years it is PLN 800.
For plant varieties, the application fee is PLN 500, and the renewal fee is PLN 200 for each of the first five years, and PLN 400 for each year after the first five. Plant variety registrations may also be subject to additional fees for examination of distinctiveness, uniformity and stability of such variety. These fees vary for different plant groups.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
For all subjects of rights, except plant varieties, it is possible to pay a periodic or renewal fee within six months after the term of protection lapsed (grace period), but this is subject to an additional fee for late renewal. Failure to pay any renewal fees within the grace period results in expiry of the right in question.
What are the requirements to assign ownership of each of the intellectual property rights described above?
Assignment of ownership of intellectual property rights requires concluding an agreement in writing under the pain of nullity. For certain rights, there are additional factors to consider while concluding a contract of assignment. For instance, copyright assignment requires specifying so-called fields of use (ways of using the work) covered by such assignment in order to be valid.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
There is no strict requirement to register the assignment of any of the registered intellectual property rights with the Patent Office. However, such assignment is not effective towards third parties unless it is recorded in the registry.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
For registered IP rights, such as patents, utility models, trade marks, semiconductor topographies, the licence agreement has to be in writing or will otherwise be invalid.
A copyright licence agreement is only required to be in writing if the licence is exclusive. Non-exclusive licences may be granted in any form. The same rules apply to performers' rights.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
A licence concerning registered intellectual property rights may be registered with the Patent Office, but this is not required and does not affect the validity of the licence. However, registering an exclusive licence provides a benefit for the licensee to take action against third party infringements in the same way as the right holder, unless the licence agreement provides otherwise.
The licences concerning unregistered intellectual property (such as copyright and related rights) cannot be registered as no such official register exists.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Non-exclusive licensees are not allowed to commence infringement proceedings against third parties. Exclusive licensees have this right in the same way as the original right holder. The right holder may limit the scope of such rights in the licence agreement.
With regard to registered rights, the licence agreement has to be registered with the Patent Office for the enforcement rights to be effective against third parties.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Certain acts concerning intellectual property rights are prohibited as crimes or misdemeanours, with sanctions of up to five years of imprisonment.
The main crimes concerning intellectual property rights are:
- Trade mark counterfeiting: placing counterfeit trade marks on goods with the intent of distributing them to the market, as well as trading with such goods;
- Copyright infringement: disseminating copyrighted works without authorisation;
- Handling illegal copies of copyright goods: acquiring, helping to sell, receiving or helping to hide the media with unauthorised copies of works, if the perpetrator has acted in order to gain an economic benefit;
- Manufacturing, advertising or using devices for the purpose of removal or circumvention of technical measures designed to restrict unauthorised reproduction of copyrighted works;
The materials and tools used in these offences may be confiscated by the state treasury. In some cases, the confiscation is compulsory.
There are no criminal sanctions for patent infringement per se.
Lesser crimes concerning intellectual property rights include filing for protection with respect to someone else's subject of rights, or misleading labelling of goods as protected by patents or trade marks.
In general, the crimes concerning intellectual property infringements are prosecuted at the request of the injured party. Only those committed in respect of goods of high value, or where committing the crime has been the perpetrator's permanent source of income, are prosecuted ex officio.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil courts consider cases concerning intellectual property rights. The Patent Office does not have the authority to hear cases concerning patent, trade mark, or copyright infringement.
Alternative dispute resolution measures (including arbitration or mediation) are also available as a means of resolving intellectual property rights disputes.
What is the length and cost of such procedures?
The length of civil proceedings may vary from case to case. In Warsaw, a typical civil case concerning IP infringement takes approximately three years from filing a statement of claim to the first instance judgment, and another term between one and two years for appellate proceedings. More complicated cases, especially those which require preparing expert opinions, can take longer.
The costs of civil proceedings consist of court fees and legal representation costs. The court fee for filing a statement of claim is usually 5% of the value of the case. Legal representation costs are agreed between the party and its attorney; they can vary greatly.
The winning party is entitled to recover the court fees incurred and a portion of legal representation costs from the losing party. The latter are awarded using statutory rates based on the value of the case, and usually only cover a small fraction of the actual costs. The courts are reluctant to award legal representation costs at higher rates.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Intellectual property infringement disputes are heard by regional courts, appellate courts and the Supreme Court. Typically, the regional court having jurisdiction over the seat or place of residence of the defendant is competent for the case.
Starting proceedings requires filing a statement of claim. In IP infringement cases, it is common to include a motion for a preliminary injunction in the statement of claim, or to file it shortly before the statement of claim. The motion for preliminary injunction, if successful, allows the claimant to secure its interests for the time of trial, e.g., by restricting sales of goods suspected of patent infringement.
In general, the statement of claim is required to provide what the claimant demands from the defendant (claims), and all evidence supporting these claims. The defendant may, but usually is not required to, file a response to the statement of claim, providing the reasoning and evidence supporting its stance.
As a general rule, the parties are required to provide all evidence in their first court motions. The court may ignore late evidence.
After the first motions of the parties are filed, the court sets a hearing date. The case is considered through a number of hearings, with each one usually a few months apart from the previous one. During hearings, the parties and witnesses are heard, and expert opinions are prepared between hearings. The trial ends with a judgment.
The first instance judgment is not final and may be appealed by each of the parties. The possibility to present new evidence before the appellate court is very limited. Usually there is only one hearing before the appellate court, with parties or their attorneys heard, followed by a judgment.
The appellate court may either uphold the first instance judgment, change it, or, in case of major flaws of the first instance judgment, refer the case back to the first instance court.
It is possible to file an appeal from the appellate court judgment to the Supreme Court, but there are several requirements which the case must meet in order to be heard by the Supreme Court.
What customs procedures are available to stop the import and/or export of infringing goods?
Yes. An owner of intellectual property rights may file an application for action by customs authorities. The application may either concern Poland or several EU member states.
Under this procedure, when customs authorities identify products which they suspect infringe IP rights, they detain them and contact the rights owner. The rights owner is allowed to commence action against the infringer.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
No such mechanisms are mandatory in intellectual property disputes. The court is required to persuade the parties to resolve the matter amicably, especially by using mediation, but the parties are not required to accept this.
What options are available to settle intellectual property disputes?
All court cases may be resolved by settlement, as long as the nature of the dispute allows for such settlement. The parties may conclude a settlement agreement either before the court or out of court. If the settlement is concluded before a mediator, the court confirms it, by which the settlement is binding as if concluded before the court. When the parties conclude a settlement before the court, the settlement agreement is recorded in the court protocol. The court may reject a settlement if concluding it would be against the law, circumvent it, or be against the principles of community life.
When the parties settle out of court, they then conclude a settlement agreement without letting the court know of its contents, and the claimant withdraws the statement of claim from the court. After the trial has started, the claimant may only withdraw the statement of claim by also relinquishing the claim. The court may reject the withdrawal if it would be against the law, circumvent it, or be against the principles of community life.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
In general, it is the obligation of the claimant to provide evidence supporting the claim. Any evidence may be used for this purpose, and there are no specific requirements on what the claimant must provide to establish infringement. It is up to the court to decide whether such evidence is sufficient to establish infringement in a particular case.
In practice, to establish infringement the claimant must provide evidence that the defendant's acts have met the statutory definitions of acts reserved exclusively for the right holder (or other authorised entity), i.e.:
a) the patent holder may forbid a third party from: (i) making, using, offering, marketing, or importing the product that is the subject of the invention for said purposes, or (ii) applying the process that is the subject of the invention and using, offering, marketing, or importing products obtained by means of the process for said purposes;
b) the same criteria apply to utility models infringements;
c) for trade marks, the infringement subsists in using the following in trade: (i) a mark identical to a registered trade mark in respect of identical goods, (ii) a mark identical or similar to a trade mark registered in respect of identical or similar goods where the public may be, in particular, misled into associating the mark with the registered trade mark, or (iii) a mark identical or similar to a reputable trade mark registered for any goods where such use may result in an illegitimate benefit for the user or may be detrimental to the distinctive character or repute of the earlier mark;
d) registered design right holders are allowed to forbid any third party to make, offer, market, import, and export, or use the product in which the design is contained or applied, or to store said product for the purposes mentioned above;
e) violating a trade secret, i.e., disclosure, use or obtaining such information of another entrepreneur is an act of unfair competition (a civil wrong);
f) the copyright holder enjoys an exclusive right to use a work and dispose of it in all fields of use, unless otherwise provided in the statute. Therefore, he or she may forbid a third party from any act that makes use of the copyright work, unless such use is lawful (e.g., due to fair use). In addition to economic copyright, the author has moral rights to the work, and may forbid third parties from any use that threatens or infringes on these rights, such as distributing the work without naming the author.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Facts are mostly gathered from evidence submitted by the parties, such as documents or witnesses. When resolving the case requires expertise from a specific field of knowledge, the court may appoint an expert.
In particular –
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Intellectual property right infringement disputes are heard by civil judges with no technical experience. The court may appoint experts, who prepare opinions concerning technical matters. The parties may present opinions prepared by their experts, but these are not considered as evidence, but arguments of the parties.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Polish law does not recognise a specific pre-trial discovery phase, but each party may request the court to demand specific information or documents from the opponent or a third party. In intellectual property infringement disputes, the claimant may also file a motion to the court to preserve evidence (by ordering a seizure of goods, for example) as a temporary measure, even before a claim is filed.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
A party may question the evidence provided by the other party and provide counterevidence. The court and both parties are allowed to ask questions to the persons appearing before the court during trial (witnesses, experts, representatives of the parties). Thus, no specific cross-examination procedure is employed.
Ultimately, the court assesses the credibility of all evidence in the judgment, using logic and common sense principles.
What defences to infringement are available?
In general, the most common defences in IP infringement cases concern the following arguments:
a) that the act complained did not qualify as an infringement, due to being within a specific statutory exemption (such as fair use for copyrights, the Bolar exemption for patents, or exhaustion of rights); or
b) that the claimant was not entitled to the right the claim is based on (e.g., not holding the copyright). This defence may not be used in infringement proceedings of registered rights (such as patents or trade marks), as the court is not authorised to assess the validity of these rights (this is the Patent Office's exclusive prerogative).
There is no definite list of defences, so others are available depending on the nature of each case.
Who can challenge each of the intellectual property rights described above?
To invalidate a patent or a utility model after it has been granted, a party may file an invalidation application with the Patent Office. An invalidation application may be filed at any time, but must prove that an applicant has a legal interest in such invalidation, which can be difficult.
Anyone may file a motion for invalidation of a supplementary protection certificate, provided that it has been granted in breach of the requirements for granting such a right or the basic patent has been invalidated in a relevant part.
An owner of an earlier trade mark may file an opposition against the registration of a trade mark by a third party. The opposition has to be filed within three months after publication of its registration.
Anyone with a legal interest may request an invalidation of a geographical indication, if it is proven that the statutory requirements for its grant had not been met.
Moreover, for patents, utility models, trade marks, designs, geographical indications, and semiconductor topographies, filing an opposition is available for anyone, but only within the term of six months from publication of the information regarding the granting of the right. In this case, the opposition may be filed only if there are grounds to invalidate such a right.
Third parties may also file objections concerning registration of plant varieties. Objections are examined by the Director of the Central Research Centre for Cultivar Testing.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Certain legal instruments may only be used within a specific term, while others are valid at any time during the subsistence of the right. See question 27 for details.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Due to their nature, only registered rights may be officially invalidated. The Patent Office considers motions for invalidation of all registered IP rights, with the exception of plant varieties.
The details of invalidation proceedings before the Patent Office vary depending on the procedure used and the particular right concerned. In most cases, a 'contentious proceedings’ procedure is used, where the parties appear before an adjudicating panel comprised of three or five experts who have technical or legal knowledge, and where the procedure resembles that before a regular court. The outcome of these proceedings is a decision of the panel, which either upholds or invalidates the right in question. The decision may be appealed.
In most cases the grounds for a finding of invalidity of a registered right mainly concern the circumstances that the statutory requirements to grant the right had not been met, or that the right had been granted in violation of a third party right.
With respect to patents, the right may also be invalidated if the invention is not disclosed in sufficient detail and clarity for an expert to realise the invention, or the patent is granted for an invention that was not covered by the patent application (added matter).
The decision of the Director of the Central Research Centre for Cultivar Testing granting plant variety protection may be invalidated by the Minister in charge of agriculture, who is the Director's superior administrative body. Such invalidation may take place especially when the decision had been issued in "gross violation of the law".
There is no way to invalidate the IP rights which are not registered (such as copyrights or know-how), before any government body. It is only possible to file a motion to a civil court to establish whether the claimant has a specific right, if the claimant has legal interest in this fact. If, however, the rights of the claimant had already been infringed by a third party, an "ordinary" infringement suit should be filed instead, which would have the same effect.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Polish law does not provide any measures similar to declaratory reliefs or "Arrow" declarations available in English law. An entity wishing to resolve an issue of potentially infringing a third party right can file a motion to the civil court to determine whether such a legal relationship exists. This measure is rarely used for this purpose in practice, as it may backfire, causing trouble to the applicant if the court finds that an infringement is likely.
In limited circumstances, it is possible to apply to the Patent Office to grant a compulsory licence for a third party patent or utility design. This measure is mostly intended for situations where using the right is necessary for national security purposes or to prevent an emergency, but can be also used if the right is abused or in cases where a holder of a prior patent refuses to grant a licence to the holder of a dependent patent, with this preventing the party to satisfy the market demand for a product.
Polish law recognises prior use as a circumstance limiting the effect of a third party IP right (patent, utility model, design, or trade mark). In general, prior use occurs when a party had been using a certain subject of rights (invention, mark, etc.) before a different party has applied for registration of such rights in its name. Prior users may continue using their subjects of rights despite such registration, but may not expand the scope of such use.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
There is no exhaustive list of measures available for the claimant while filing a motion for an interim remedy. IP legislation contains certain interim measures which can be employed in case of an infringement, but as the court has a broad right to "regulate the rights and obligations of the parties for the duration of the proceedings", other measures may also be employed. In practice, right holders usually demand the following:
a) an order to suspend production or sales of products that are likely to infringe a right;
b) an order to seize such goods;
c) an obligation imposed on the defendant or a third party (who, e.g., possesses the infringing goods) to provide information on the origin or distribution networks of potentially infringing goods.
In IP infringement disputes, in most cases the claimant may demand the following main remedies to be awarded against the defendant:
a) cessation of the infringement (a permanent injunction);
b) return of unlawfully earned benefits;
c) communication of the court decision or part of it in public;
d) decision regarding the unlawful products or materials owned by the infringing party – especially by ordering their withdrawal from the market, destruction or awarding them to the plaintiff in lieu of damages;
e) payment of damages.
In most cases, damages may only be awarded if the infringement is found by the court to be committed in a culpable manner (i.e., wilfully or negligently).
Certain remedies are only available for specific IP rights. In cases concerning copyright infringement or unfair competition acts (including trade secret violations), the court may force the defendant to publish a specific declaration, usually in the form of a public apology.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
See question 18.