The Industrial Property Law does not explicitly mention the possibility of assessing patent infringement under the doctrine of equivalents. However, the doctrine seems to be gaining support among legal commentators and judges. The admissibility of the doctrine of equivalents in Poland has long been the subject of lively discussion, which may soon be concluded with definite answers.
Article 63(2) of the Industrial Property Law states that a patent's scope is defined by its patent claims. The literal interpretation suggests that a patent claim should be interpreted strictly. This is still the most important argument of opponents of the doctrine of equivalents. For this reason, the courts used to prefer to assess infringement in a strict way and required the claimant to substantiate that the technical solution used by the infringer was exactly the same as the technical solution described in the patent claims.
Conversely, the supporters of the doctrine of equivalents argued that Article 63(2) of the Industrial Property Law did not exclude the possibility to apply the doctrine of equivalents. They also argued that the doctrine of equivalents was accepted by the European Patent Convention and that the scope of protection of Polish and EU patents should not be different.
One of the main problems of applying the doctrine of equivalents in Poland has always been – apart from the issue of its admissibility – the lack of clear guidelines for its application. In many jurisdictions, the courts have developed principles of understanding the equivalency and assessing patent infringement under the doctrine of equivalents. Unlike Germany or the United Kingdom, there are no well-established tests or guidelines for the application of the doctrine of equivalents in Poland.
Despite the lack of guidelines, some courts have used the doctrine of equivalents according to the views proposed by the commentators, who often based their opinions on case law developed in other European Patent Office jurisdictions. For example, on November 9 2012 the Lodz Court of Appeal ruled that patent protection may be expanded to obvious equivalents of a protected invention that do not alter or improve the final effect of the invention.
On December 10 2015 the Supreme Court addressed the issue of the doctrine of equivalents. In a judgment annulling a Warsaw Court of Appeal judgment, the Supreme Court recapped the doctrine in detail and formulated the general guidelines for an assessment of infringement under the doctrine of equivalents.
However, the Supreme Court did not conduct a material analysis of the Court of Appeal judgment which was annulled due to procedural issues. The Supreme Court pointed out that the Court of Appeal had interpreted the patent claims strictly and did not consider an infringement under the doctrine of equivalents. The Supreme Court only hinted at the possibility that the doctrine of equivalents should be assessed.
The Supreme Court's ambiguous position leaves room for discussion. The supporters of the doctrine of equivalents consider the judgment a final confirmation of its admissibility in Poland, while opponents emphasised that the Supreme Court did not present a clear position on this matter. However, the fact that the Supreme Court raised the issue of the doctrine of equivalence may encourage judges to consider the admissibility of the doctrine while adjudicating patent infringement cases.
For now, careful approach to the doctrine of equivalents is still recommended. The existing status of the theory of equivalents is best illustrated by the July 13 2016 judgment of the Warsaw Court of Appeal, which stated that the doctrine may be used for the assessment of patent infringement, but this should be done with due caution.
While it may be too early to formulate a definite answer on the admissibility of the doctrine of equivalents in Poland, there has been an increase of cases where infringements were assessed under the doctrine of equivalents. This may be attributed to the general increase of patent infringement cases in Poland and the expanding popularity of the doctrine of equivalents among legal commentators. The coming years should therefore provide more precise answers to the question of admissibility of the doctrine of equivalents in Poland.
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 ([email protected] or [email protected]). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.
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