It has now been over a year since the most recent restructuring of Polish IP law. One of the aims of the update was closer harmonisation with regulations in other EU countries and with the European Patent Convention. Despite these efforts, however, many differences in procedure, and perhaps more importantly, in substantive matters, persist.
Some variation between different jurisdictions is expected and perhaps unavoidable. During the current pandemic, national authorities also often undertake different measures to facilitate safe contact and communication. This may cause further divergence in procedure between countries.
The outline below indicates the most important aspects of current Polish practice, which may be particularly relevant.
A patent application can be filed with the Patent Office of the Republic of Poland electronically, using an online service available at the patent office web page. This tool allows filing of new applications (for patents, utility models, industrial designs and trademarks, including applications for the so-called fast-track for the latter two).
Other available actions include European patent validations, various requests related to trademarks and requests for changes in registers or for extracts from the registers. In practice however, practically any other request or document can be filed using a general form for “other”.
E-comms
The new service additionally allows payment of official fees. If a contact with the patent office is initiated through the online portal, the office will usually respond also through the same means, but this is not a general rule and it sometimes still happens that communications are sent in paper form.
This may be important since terms for response for the applicant are calculated from the date of receipt. In case of electronic communications, it is possible to accept an incoming communication (by signing a receipt, eg, using an electronic signature with a digital certificate) at a preferred moment, from the day it is issued. After 14 days however, the communication will appear in the applicant’s inbox and be considered delivered.
The Polish patent office also provides applicants with an option of requesting an electronic version of the priority document. This is a welcome improvement, although it should be noted that the office is still not participating in the World Intellectual Property Organization’s Digital Access Service.
“Most examiners work remotely, so it may be more difficult to contact them by phone. However, the overall duration of proceedings appears to be unaffected.”
Aleksandra Solyga-Zurek
Documents such as powers of attorney may also be filed electronically. They should however carry a digital signature (verified by a certificating authority—electronic signatures in a form of an image, as used, eg, in the US will not be sufficient). Another possibility is filing a scanned copy which is certified to be a true copy of the original. The certification can be done, for example, by a notary or by the professional representative of the applicant.
A search report for a patent application or a utility model should now be available within nine months from the filing date. A search report is now accompanied by a written opinion which will not be published. The cited literature will not be immediately available although copies of the documents can be requested in a scanned form for a small fee.
Most examiners work remotely, so it may be more difficult to contact them by phone. However, the overall duration of proceedings appears to be unaffected, especially in the biological and chemical fields.
The opposition procedure was simplified with the recent novelisation and now involves just one examiner re-assessing the case and all parties communicating in writing, which makes it easier to conduct remotely.
Invalidation proceedings still require oral proceedings which are conducted on site (with safety measures such as face masks and gloves being required from all attendees). It should be noted however that oral proceedings before Polish courts are frequently conducted by videoconferencing.
Therefore, apart from the oral proceedings themselves other actions can in most cases be performed online. Development of electronic means of communication with the patent office has been underway for some time even before the pandemic but they have certainly proved useful during the unexpected challenges we face now.
They also improve accessibility and encourage more environmentally friendly proceedings, and we hope they are here to stay.
Aleksandra Solyga-Zurek is a Polish and European patent attorney. For any enquiries related to patents in Poland and the EU, Patpol’s attorneys can be contacted at: patent.department@patpol.pl
Main image: shutterstock.com / pixelparticle
