Intellectual Property Protection in Poland A review of the present situation of intellectual property rights and their enforcement in Poland Prepared by Aase Gundersen, Advokat, Oslo and Brigitte Lindner, Rechtsanwältin, Berlin 2 March 2002 2 TABLE OF CONTENTS INTRODUCTION 8 SUMMARY 10 I Industrial Property 10 II Copyright and Neighbouring Rights 12 III Enforcement 15 IV Recommendations 17 DISCUSSION 20 PART I INDUSTRIAL PROPERTY 20 A. Legislative Framework for the protection of Industrial Property Rights 20 1. Laws dealing with Industrial Property Rights and related issues 20 2. International Conventions 20 B. Substantive Legal Issues of Industrial Property Protection 21 1. Patent 22 a) Patentability of invention 22 b) Exclusion from patentability 23 c) Beneficiary of Patent Rights 24 d) Patent application 24 e) Unity of invention 25 f) Priority 25 g) Publication of acceptance of the patent application 25 h) Examination, grant and maintenance of patent 26 i) International applications under the PCT 26 3 j) Exclusive right 27 k) Restriction of rights derived from a patent 27 l) Provisional legal protection 28 m) Exhaustion 28 n) Right of prior use 28 o) Duration of protection 28 p) License 29 q) Invalidation and lapse of patent 30 2. Utility Models 30 a) Definition and conditions for protection 30 b) Applications, priority and registration 30 c) Scope of protection 31 d) Term of protection 31 3. Industrial Design 31 a) Definition and conditions for protection 31 b) Exclusion from protection 32 c) Beneficiary of Industrial Designs Rights 32 d) Industrial design application 32 e) Examination and grant of right in registration 33 f) Exclusive right 33 g) Term of protection 33 4. Protection of Topographies of Integrated Circuits 34 a) Definition and conditions for protection 34 b) Scope of protection 34 c) Duration of protection 35 5. Trademarks 35 a) Definition of a trademark 35 b) Priority 36 c) Registration procedure 36 d) Grounds for refusal of a trademark registration 37 e) Earlier trademarks as grounds for refusal 37 f) Registration, publication and certificate 37 g) Duration and renewal 38 h) Exclusive right of the owner of a registered trademark 38 i) Exclusive right of the owner of a well-known mark 38 j) Prohibition of the use of trademarks 39 4 k) Restrictions of the exclusive rights 39 l) Exhaustion of rights 39 m) Lapse of protection for non-use 40 n) Transfer 40 o) Licensing 40 p) Invalidation of a trademark registration 40 q) Revocation 41 6. Geographical indications 41 a) General remarks 41 b) Registration 41 c) Scope of protection 42 d) Beneficiaries of protection 43 e) Duration of protection 43 7. Unfair competition 44 a) Definitions 44 b) Marking of enterprises (company names) 44 c) Marking of goods or services 44 d) Trade secrets 45 e) Advertising 45 C. Recommendations 46 1. Legal issues 46 2. Practical issues 47 PART II COPYRIGHT AND NEIGHBOURING RIGHTS 48 A. Legislative framework for the protection of Copyright and neighbouring rights 48 1. Laws dealing with the protection of copyright and neighbouring rights 48 2. International conventions 49 a) Berne Convention 50 b) Universal Copyright Convention 50 5 c) Rome Convention 50 d) TRIPS Agreement 51 e) Self-executing nature of international treaties 51 3. Bilateral agreements 52 4. Institutions dealing with the protection of copyright and neighbouring rights 53 B. Substantive legal issues in the field of copyright and neighbouring rights 54 1. Subject matter of protection 54 a) Copyright 54 b) Neighbouring rights 55 c) Sui generis rights 57 2. Conditions for protection 57 a) Eligibility for protection 58 b) Applicability in time 61 c) Compliance with formalities 65 3. Beneficiaries of protection 66 a) Works 66 b) Subject matters of neighbouring rights 70 c) Sui generis right 71 4. Scope of protection 71 a) Works in general 71 b) Computer programs 74 c) Works of fine art and manuscripts 75 d) Neighbouring rights 75 e) Sui generis right 79 5. Duration of protection 79 a) Copyright 80 b) Neighbouring rights 81 c) Sui generis right 83 6. Limitations and exceptions 83 a) Limitations and exceptions provided for in Articles 23-35 Copyright Act 83 6 b) Private copying royalty scheme 86 c) Computer programs 88 d) Sui generis right 88 7. Transfer and assignment of copyright and neighbouring rights 88 a) Moral rights 89 b) Economic rights 89 8. Administration of copyright and neighbouring rights 92 a) Legal provisions governing collecting societies 93 b) Practical rights management 95 C. Recommendations 96 1. International treaties 96 2. Points of attachment 97 3. Applicability in time 97 4. Scope of protection 97 5. Duration of protection 98 6. Limitations and exceptions 98 7. Miscellaneous legal policy considerations 99 8. Miscellaneous clarifications and definitions 99 9. Collective administration 100 PART III ENFORCEMENT 101 A. Legal tools for the enforcement of intellectual property rights 101 1. Civil remedies and procedure 101 a) Civil remedies 101 b) Procedural aspects 107 c) Provisional measures 109 2. Criminal sanctions and procedure 110 a) Criminal sanctions 110 b) Procedural aspects 115 3. Administrative sanctions and procedure 119 7 4. Border measures 121 a) Scope of the Regulation 122 b) Procedure upon application by the right owner 122 c) Ex officio procedure 124 B. Practical enforcement 125 1. Piracy affecting the various industries 126 a) Music industry 126 b) Software industry 128 c) Motion picture industry 129 2. Main obstacles to successful enforcement 130 C. Recommendations 132 1. Legal issues 132 2. Practical issues 133 8 INTRODUCTION The Advisory Group on the Protection and Implementation of Intellectual Property Rights for Investment of the United Nations Economic Commission for Europe (UN/ECE) entrusted Aase Gundersen, Advocate in Oslo, and Brigitte Lindner, Rechtsanwältin in Berlin, with the preparation of a background paper as a basis for a consultative meeting to be held in March 2002 in Poland. While Aase Gundersen was given the task to study the situation of industrial property rights including unfair competition, Brigitte Lindner was to analyse the situation with regard to copyright and neighbouring rights and was given responsibility to finalise the report. As a result, while Part I dealing with industrial property rights was prepared by Aase Gundersen and Part II on copyright and neighbouring rights by Brigitte Lindner. Part III addressing the enforcement of intellectual property rights constitutes a co-production of both consultants. The background paper is based on the legislation in English translation, which was made available to the consultants as well as on information obtained in the discussions with the persons listed below. Often, it was necessary to rely on general information on the contents of laws, since many laws, in particular statutes governing enforcement such as the laws on civil, criminal and administrative procedures were not at the consultants’ disposal in English translation. Meetings were held in Warsaw and Cracow from 7 to 10 January 2002 with the following representatives of both public and private bodies: Public sector Wojciech Dziomdzora, Acting Deputy Director, Legal and Legislative Department, Ministry of Culture and National Heritage Ins. Jan Hajdukiewicz, General Headquarters of Police Ms. Aleksandra Jakubowska, The Secretary of State in the Ministry of Culture and National Heritage Ms. Biruta Januszewska - Prosecutor, Mr. Wieslaw Kotarba - President of the Patent Office, Ms. Grazyna Lachowicz, Principal Specialist, Patent Office, 9 Mr. Zenobiusz Miklasinski, Vice President of the Patent Office, Ms. Gabriela Iwona Monko, Head of the Department of the Tariff and Non-Tariff Means in the Main Board of Customs, Mr. Marek Sadowski, Director of the Legal Department in the Ministry of Justice Mr. Wlodzimierz Ryms, President of the Main Administrative Court Jagiellonian University in Cracow: Prof. Janusz Barta, Mgr Marek Bukowski, Mgr Dawid Kot, Prof. Ryszard Markiewicz, Mgr Sybilla Stanislawska-Kloc, Prof. Janusz Szwaja, Private sector Mr Jerzy Andrzej Badowski, Deputy Director General, ZAIKS Mr. Marek Kaczmarek, President of FOTA, Ms. Iwona Sierzputowska, Patent Agent, Mr. Mikolaj Sowinski, Lawyer, Business Software Alliance, Mr. Marek Staszewski, Plenipotentiary/authorized agent of ZPAV (Polish Society of the Phonographic Industry), Mr. Wlodzimierz Szoszuk, Lawyer, Wardynski Law Firm, 10 SUMMARY I Industrial Property Protected Industrial Property Rights The following industrial property rights are protected in Poland: patents, utility models, industrial designs, topographies of integrated circuits, trademarks and geographical indications. The entire regulations of these rights are now concentrated in the new act on Industrial Property Law of 30. June 2000, which came in to force in August 2001. In addition, the combating Unfair Competition Act of 1993 provides a certain level of protection for trade names, trade secrets, imitation of goods as well as unfair advertising. Scope of protection Patent protection may be granted to inventions in any fields of technology, provided they are new, involve an inventive step and are industrial applicably. Novelty is absolute. Utility model protection may be granted to any new un-useful solution of a technical nature affecting shape, construction or durably assembly of an object. Protection for industrial design is available for the appearance of a product, which is new, original and capable of multiple reproductions. Topographies of integrated circuits, defined as a