IP Protection in Europe and 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, Despite its vast internal diversity, the European Community has a unified located in the Central-Eastern part of Europe by the Baltic Sea. Its capital and effective system of protection of intellectual and industrial property is Warsaw. Poles comprise 25% of the total regional population and are rights. The two main institutions responsible for industrial property pro- responsible for almost 40% of its GDP. tection in the EU are EUIPO (European Union Intellectual Property Office), which provides trademark and design protection, and the EPO (European Despite the world financial crisis, the Polish economy continues to grow ), which grants patent protection. dynamically and is currently ranked the 6th largest in Europe. Poland has Such a system offers European entities three different routes of obtain- a well-developed infrastructure, electro-technical industry and agro-food ing protection for their intellectual property rights, depending on their and forest industry. In recent years, due to an increase in funding for R&D, individual goals and business needs. the automotive, airline, electronic, telecommunications, IT, biotechnolo- gy, biochemistry, biomedical and pharmaceutical engineering, construc- They are: the national route (whereby a patent application is filed to the tion, robotics and nanotechnology industries have registered significant patent office of the particular country); the regional route (a validated economic growth. Almost 30% of large service centres in Poland are re- European patent, which is granted in selected countries); and the inter- search and development facilities. national route. A new fourth route will soon be introduced - the unitary patent, which is to lower costs and improve the procedure of granting Poland is politically and economically stable, with favourable conditions patent protection in the EU. for long-term investments. In 2014 the FDI index increased by 23% in relation to the previous year. The economy in Poland continues to at- In 2015, EU institutions reported nearly 279,000 patent applications tract foreign investment capital. In the middle of 2013 the government (EPO), 130,000 applications for trademark registration, and 97,500 ap- decided to continue operating Special Economic Zones (SEZ) until 2026. plications for design registration (EUIPO). Almost 35% of the European Within the SEZs investors may obtain beneficial tariff reductions and patent applications come from Asian countries (18% Japan, 11% China tax exemptions. Innovative entities may apply for the status of an R&D 6% South Korea). 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 distrib- In 2015, over 20,270 patent, utility model, trademark, and design ap- uted with priority given to the development of cooperation between plications under the national procedure were filed with the Polish science and business, and in recent years Polish research centres have Patent Office. In Poland, 929 patent attorneys work on IP protection considerably improved their research infrastructure due to receiving matters, 291 of whom are authorized to handle proceedings before community funds, the prospects for foreign investment capital seem to the . be promising.

In 2004, Poland became a member state of the European Union. The EU 279,000 (patent) Japan 18% has more than 507 million citizens and its total area equals over 4 mil- USA 24% lion 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 China 11% the most significant commercial powers in the world. The EU economy, 86,127 (design) as measured by the production of goods and services (GDP), is bigger Others 6% Republic than that of the United States. The economic policy of the European of Korea 6% Union is aimed at maintaining its growth through investments in trans- port, energy, and scientific research, as well as at minimizing the negative 108,515 (trademark) Other EPO States 35% influence of economic development on the natural environment. EPO and EUIPO applications European patent fillings 1 in 2015 (source: EUIPO) (source: EPO) 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 submis- sion 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 medi- um-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.

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. 2 Copyrights

What is the relevant legislation? What is excluded from copyright protection?

In Poland the basic legislation referring to copyrights is the Act of 4 Feb- Copyright shall not cover: ruary 1994 on Copyright and Related Rights (the Copyright Act) (consoli- • legislative instruments and their official drafts; dated text: DzU of 2006, No. 90, with subsequent amendments), which • official documents, materials, logos and symbols; defines the subject matter of copyright protection, its scope, and instru- • published patent specifications and industrial design specifications; ments of protection against infringements. • simple press information; and • works that do not fulfil the prerequisites referred to above. Who may claim copyrights protection? Do the doctrines of ‘fair use’ or ‘fair dealing’ exist? 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 In Polish copyright law there are provisions defining the permissible use what extent he or she will enforce his or her rights. of protected works. Under these provisions, it shall be permitted to use, However, in addition to the author, other entities may enforce any rights free of charge, work which has already been disseminated for purposes resulting from the Copyright Act. In this respect, Article 67(4) provides of personal use without the permission of the author. This provision does the basis for claiming protection of author’s economic rights under an not allow building of constructions according to other authors’ architec- exclusive licence, provided that the claim refers to the use of a work cov- tural works as well as architectural and town planning works, or to use ered by an exclusive licence agreement and the agreement does not con- electronic databases showing the features of a work unless this applies tain exclusions as regards the protection sought by the licensor. Organi- to the user’s own scientific use and is not connected with any profit-gain- sations for the collective administration of copyrights or neighbouring ing purposes. rights may claim remuneration and fees due to the rights holders. Is there a requirement of copyright notice? How long does copyright protection last? Under Polish copyright law there is no requirement of copyright notice. 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? On 22 January 2015 the Court of Justice of the Euro- There is no centralised copyright agency in Poland. However, there are pean Union made an interesting decision on the ex- several organisations of collective administration of copyrights or related haustion of rights (case no. C-419/13). According to rights that act as associations, for example: the Court’s ruling, the exhaustion of the distribution • ZAIKS – the largest Polish organisation of collective administration that groups together authors; right does not apply in a situation where a reproduc- • ZPAV – acts on behalf of producers of phonograms and videograms; tion of a protected work, after having been marketed • Polska Książka – acts on behalf of publishers and authors. in the European Union with the copyright holder’s consent, has undergone an alteration of its medium, What types of works are subject to copyright? such as the transfer of that reproduction from a pa- The subject matter of copyright shall be any and all manifestation of crea- per poster onto a canvas, and is placed on the market tive activity of an individual nature, established in any form, irrespective again in its new form. 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.

3 Unfair competition

What is the relevant legislation? • order the offending party to pay reparations or return unjustified ben- efits The legislation referring to unfair competition is The Polish Act of 16 April • force a party to publish specific statements. 1993 on Combating Unfair Competition. Both entities which have their The act also provides for criminal proceedings to be initiated against a industrial property rights registered as well as those that don’t possess person committing an act of unfair competition in particular circum- such rights may seek redress through the courts if they become victims of stances. Such proceedings may only, however, be initiated at the request unfair competition. of the injured party.

What does unfair competition mean under the Polish law?

According to the Polish Act on Combating Unfair Competition, an act of According to the Polish case law, registration of a unfair competition is an action contrary to law or good manners which trademark does not provide protection against unfair threatens or violates the interests of another entrepreneur or a customer. competition claim. Examples of this include: • misleading product labelling The provisions of the Act on Combating Unfair Com- • finished products imitation petition are solely applicable to entities actually • company secrets violation operating on the Polish market. Establishing a sub- • misleading advertisement. sidiary on the Polish territory is not equivalent to a foreign entrepreneur doing business in Poland. In Which institutions deal with disputes relating to unfair such a case, only the subsidiary is recognized as an competition? entity operating in Poland and solely such a subsidi- Such cases are recognized by courts of law. In the case of violations, the ary may initiate proceedings under the Act on Com- court may in particular: bating Unfair Competition. • prohibit certain actions

Mediation

What is the legal basis for Alternative Dispute Resolution Costs of mediation proceedings in Poland? They may vary depending on the ongoing stage of mediation: Mediation, as an alternative for resolving disputes, has been present in 1. They can be indicated by the Court during the court proceedings Polish law for many years. However, on January 1, 2016, novelization of (the Court designates a person from the list of mediators of the court the civil code came into force considerably simplifying the use of me- and the fees are determined in the regulation); diation for the participants of court proceedings in civil and commercial or cases, including disputes concerning intellectual and industrial property. 2. If it is a non-judicial resolution of the dispute, then the mediation costs are calculated by a mediation centre, e.g. JWP. Advantages of mediation proceedings Mediation concerning intellectual property Characteristic of mediation proceedings: • voluntariness, confidentiality, impartiality and neutrality Mediation relating to intellectual property cases includes infringement • significantly lower costs in comparison to litigation proceedings of trademarks, patents, industrial designs, utility models, geographical • shorter duration of the proceedings (mediation: 2-6 months vs litiga- indications, names of plant varieties, domain names, and copyrights. tion: 2-6 years). A novelty to the provisions concerning mediation has introduced an advan- Disputes concerning intellectual and industrial property are usually com- tage in subsequent legal proceedings when a plaintiff makes an attempt plex and time-consuming. Sometimes, they are concluded when protec- to amicable resolve the matter before filing a statement of claim. Then, tion of a patent or utility model is soon to expire or an entrepreneur is while adjudicating about costs, the Court would take this fact into account in the process of rebranding. In such cases, the use of mediation can and increase the costs awarded to the party accordingly. 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 accept- able 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 require- ment 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 Number of Practitioners Number of Clients Number of Cases 70 30 5,000 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, con- ducting contentious proceedings, updating records and renewals, managing IP portfolios, undertaking due diligence, assisting with licensing, negoti- ating 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 objec- tives 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 proceed- ings 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.

JWP Patent & Trademark Attorneys Sienna Center T: +48 22 436 05 07 www.jwp.pl ul. Żelazna 28/30 F: +48 22 436 05 02 7 00-833 Warszawa E: [email protected] Poland