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23 October 2017
Need for limitation
Patent holder's possible options
Many patent systems recognise procedures for the post-grant amendment of patent claims. For example, the European Patent Convention grants patent owners the right to limit their patent by amending its claims if its validity is questioned. It also allows for the revocation or limitation of a patent by amendment of the claims. The Industrial Property Law has no equivalent of such procedures. However, it seems that patent owners may have some, at least theoretical, options which allow for the amendment of patent claims.
Patent claims are often formulated in a way that guarantees a broad scope of protection. The exclusivity conveyed by a patent is usually defined only by patent claims which comprise:
If the validity of a patent is challenged, the owner's defence may include limiting the scope of the protection granted by the patent. This may be done by replacing the previous independent claim with a dependent one to make it more specific. Limiting the scope of protection often facilitates claims that the patentability criteria have been met. A patent owner may prefer to keep the patent's scope limited rather than risk losing it, so the amendment of patent claims may be a viable defence by the patent owner in invalidity proceedings.
Although Polish law does not explicitly provide for amending patent claims, there are two options for tackling this problem indirectly. These options have been suggested in case law, but there have been no clear decisions confirming their admissibility.
First, it is argued that when assessing the validity of a patent, the Patent Office has the right to redraft a patent claim. Therefore, during invalidity proceedings, a patent owner may propose the wording of an amended patent claim and argue that even if part of the patent is deemed invalid, the remaining part should be protected. Although it is ultimately the Patent Office that decides on the final wording of a claim, if the patent owner presents a solid argument during validity proceedings, it may help to convince the Patent Office to follow the owner's suggestions.
The second option is to initiate renunciation proceedings (ie, requesting partial renunciation of the patent by rephrasing the original claims). Arguably, a patent may be partially renounced, the patent owner may request the Patent Office to issue a decision limiting the scope of the patent by redrafting the claims or replacing the previous independent claim with a dependent one. Some legal commentators exclude the possibility of rephrasing as a means of partial renunciation of a patent, but the Industrial Property Law does not expressly prohibit the Patent Office from issuing such a decision.
In sum, there are two options that patent holders may consider. Due to the lack of case law, the assessment of their admissibility is difficult, but in some cases it may be worth considering these options to defend a patent's validity.
There is a need for Polish patent law to provide for an explicit procedure that allows for the amendment of patent claims during invalidity proceedings. Although two theoretical options exist, the lack of well-established case law means that their viability remains uncertain. However, it is hoped that the admissibility of these options will be assessed by the Patent Office and the courts in the near future, as patent holders have become more interested in exploiting less obvious means of defending their patents in invalidity proceedings.
For further information on this topic please contact Szymon Gogulski or Mikolaj Skowronek at Soltysinski Kawecki & Szlezak by telephone (+48 22 608 7000) or email (firstname.lastname@example.org or email@example.com). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.
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