Introduction
Grace period for disclosure of inventions
Clear and complete disclosure of inventions
Biotechnological inventions
?Comment
Introduction
Significant amendments to the Industrial Property Law will enter into force on December 1 2015, introducing important changes to the provisions on patents, trademarks and industrial designs. The amendments reflect the development of European patent law and recent rulings of the European Court of Justice (ECJ), which created discrepancies between the Polish and European patent systems. This update focuses on three amendments to the patent regulations.
Grace period for disclosure of inventions
Previously, the Industrial Property Law took a rigorous approach to the disclosure of inventions, requiring an invention to be filed with the Polish Patent Office (PPO) before it was disclosed to the public. The amendment introduces a grace period of six months in the event of unauthorised disclosure of an invention.
However, applicants will not automatically benefit from the grace period in every case of unauthorised disclosure; they must demonstrate that the disclosure resulted from an 'evident abuse' of their interests. Although what constitutes 'evident abuse' has not been defined, it is expected that this should be interpreted in accordance with European case law relating to Article 55(1) of the European Patent Convention. Therefore, the assessment of 'evident abuse' should focus on whether it was clear and unquestionable that the disclosing party was unauthorised to communicate the information about the invention to others,(1) and should also include an examination of the disclosing party's intent.(2)
Clear and complete disclosure of inventions
Although the Industrial Property Law previously required patent applications to disclose the invention in a manner that was sufficiently clear and complete for it to be carried out by a person skilled in the art, it did not explicitly provide for insufficient disclosure as an independent ground for a patent's validity. It was therefore necessary to demonstrate the lack of industrial application of a patent in invalidation proceedings. Based on opinions of jurisprudence, the PPO and administrative courts (to which the PPO's decisions are appealed) started to apply the rule that is expressed in Article 83 of the European Patent Convention, and in several instances invalidated patents based on insufficient disclosure.
The amendment establishes clearly that patents may be invalidated if it is demonstrated that disclosure of the invention does not allow a skilled person to carry it out. This change should facilitate and expedite invalidation proceedings and force applicants to formulate patent claims and specifications more carefully.
Due to the ECJ judgment in Monsanto Technology,(3) it became necessary to specify the scope of biotechnological inventions in Poland. The ECJ decided that protection of gene patents does not apply when the gene sequence does not perform the function for which it has been patented.
In order to comply with the ECJ's findings, the amendment requires the applicant to specify the precise function of the biotechnological invention in the independent patent claims. Furthermore, the applicant must include the industrial application of the sequence in the patent specification.
The upcoming changes to the Industrial Property Law enhance its compliance with the European Patent Office's recommended patent practice, indicating that the legislature intends to keep the Polish national patent system in line with European standards. Although it took a while to implement the changes, they are a positive development overall.
For further information on this topic please contact Szymon Gogulski or Mikolaj Skowronek at Soltysinski Kawecki & Szlezak by email ([email protected], [email protected]). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.
Endnotes
(1) European Patent Office Board of Appeal decision in Case T 173/83.
(2) European Patent Office Board of Appeal decisions in Cases T 436/92 and T 585/92.
