Transfer of IP rights in Poland

A patent can be transferred by transaction and succession. Also, if a patent is granted to an unauthorised person, the patent proprietor may request through a court that the patent be transferred to him.
The assignment does not have to be recorded (it is not required by the law). However, it must be recorded in order to be effective vis-à-vis third parties.

To record a patent assignment, the application should be submitted to the Polish Patent Office. The application should be accompanied by a power of attorney (if the applicant has appointed a representative), proof of payment of the fee due on the application, and other documents justifying the decision to make an entry in the register (e.g. sales contract, donation, notarial confirmation of the inheritance, etc.).

2.1 Are original supporting documents essential or are copies sufficient?

Copies certified to be true to the original are sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

If copies (and not original documents) are submitted, they should be certified to be true to the original by a notary public or representative of the party (a patent attorney or a person who provides cross-border services). The application for a patent assignment and supporting documents must be provided in Polish.

2.3 Is there a must to use a specific form?

No specific form must to used. Applicants who have created an account on the PUEUP Patent Office platform can access the online application form. It is also possible to submit the application on paper.

If the patent assignment is not recorded, it has no legal effect vis-à-vis third parties.
The record of the assignment in the patent register has a declarative effect.

Each co-proprietor can dispose of his share without the consent of the remaining co-proprietors.

However, the consent of all the co-proprietors is required to assign the whole patent. In the absence of such consent, co-proprietors whose shares amount to at least one half can apply to the court for a decision in this respect.

If the person has his place of residence or seat in the EEA or Switzerland, there is no need to appoint a professional representative in Poland. 

Persons who are not domiciled in the EEA or Switzerland can act only through a patent attorney or a person who provides cross-border services within the meaning of the Polish Act of 11 April 2001 on Patent Attorneys. 

PLN 70 per entry in the registry and stamp duty of PLN 17 per submission to the Polish Patent Office of a document confirming the granting of a power of attorney.

There are:

1. exclusive and non-exclusive licences;
2. incomplete (limited) and full licences;
3. compulsory licences;
4. open licences.

All of them can be recorded in the patent register.

The licence right becomes effective when the licence contract is concluded between the parties., The licence becomes effective vis-à-vis third parties when it is recorded in the patent register.

To record a licence, the application should be submitted to the Polish Patent Office. The application should be accompanied by a power of attorney (if the applicant has appointed a representative), proof of payment of the fee due on the application and the licence agreement.

8.1 Are original supporting documents essential or are copies sufficient?

copies certified to be true to the original are sufficient;

8.2 Are there any legalization and/or notarization and/or translation requirements?

if copies (and not original documents) are submitted, they should be certified to be true to the original by a notary public or representative of the party (a patent attorney or a person who provides cross-border services). The application for entry of a licence and supporting documents must be provided in Polish;

8.3 Is there a must to use a specific form?

no specific form has to be used. Applicants who have created an account on the PUEUP Patent Office platform can access the online application form. It is also possible to submit the application on paper.

Registration is irrelevant for the validity of a licence agreement. However, an entry in the register is needed in order to exercise the right vis-à-vis third parties. 

The record in the patent register has a declarative effect.

If the person has his place of residence or seat in the EEA or Switzerland, there is no need to appoint a professional representative in Poland. 

Persons who are not domiciled in the EEA or Switzerland can act only through a patent attorney or a person who provides cross-border services within the meaning of the Polish Act of 11 April 2001 on Patent Attorneys. 

PLN 70 per entry in the registry and stamp duty of PLN 17 per submission to the Polish Patent Office of a document confirming the granting of a power of attorney.

Yes, it is. A pledge can be created at the request of the person concerned. The creation of a pledge is subject to disclosure in the patent register. It is, however, possible to invoke the pledge on the patent vis-à-vis third parties, regardless of its disclosure in the register.

The so-called “registered pledge” is effective upon entry in the register of pledges. 

A trademark protection right can be transferred by transaction or succession. It is also possible, under certain circumstances, to request the transfer of the trademark protection right before a court.

The assignment does not have to be recorded (it is not required by the law). However, it must be recorded in order to be effective vis-à-vis third parties.

To record a trademark protection right assignment, an application should be submitted to the Polish Patent Office. The application should be accompanied by a power of attorney (if the applicant has appointed a representative), proof of payment of the fee due on the application and other documents justifying the decision to make an entry in the register (e.g. sales contract, donation, notarial confirmation of the inheritance, etc.).

2.1 Are original supporting documents essential or are copies sufficient? 

Copies certified to be true to the original are sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

If copies (and not original documents) are submitted, they should be certified to be true to the original by a notary public or representative of the party. The application for entry and supporting documents must be provided in Polish.

2.3 Is there a must to use a specific form?

No specific form has to be used. Applicants who have created an account on the PUEUP Patent Office platform can access the online application form. It is also possible to submit the application on paper.

If the trademark right assignment is not recorded, it has no legal effect vis-à-vis third parties.
The record of the assignment in the trademark register has a declarative effect.

The consent of all co-proprietors is required for the agreement to transfer the share in the protection right to be valid.

It is possible to  transfer a trademark protection right that concerns only some of the goods for which such right was granted. No other types of division of the protection right (e.g. territorial) are permitted.

The goods to be transferred in the case of a partial transfer should be specified within the trademark transfer agreement (which should be attached to the application as the document justifying the transfer).

If the person has his place of residence or seat in the EEA or Switzerland, there is no need to appoint a professional representative in Poland. 

Persons who are not domiciled in the EEA or Switzerland can act only through a patent attorney, solicitor, legal counsel, or a person who provides cross-border services within the meaning of the Polish Act of 11 April 2001 on Patent Attorneys.

PLN 70 per entry in the registry and stamp duty of PLN 17 per submission to the Polish Patent Office of a document confirming the granting of a power of attorney.

There are:

1. exclusive and non-exclusive licences;
2. incomplete (limited) and full licences.

All of them can be recorded in the trademark register.

The licence right becomes effective when the licence contract is concluded between the parties. The licence becomes effective vis-à-vis third parties when it is recorded in the trademark register.

To record a trademark licence, an application should be submitted to the Polish Patent Office. The application should be accompanied by a power of attorney (if the applicant has appointed a representative), proof of payment of the fee due on the application and the licence agreement.

9.1 Are original supporting documents essential or are copies sufficient? 

Copies certified to be true to the original are sufficient.

9.2 Are there any legalization and/or notarization and/or translation requirements?

 If copies (and not original documents) are submitted, they should be certified to be true to the original by a notary public or representative of the party. The application for entry of a licence and supporting documents must be provided in Polish.

9.3 Is there a must to use a specific form?

No specific form has to be used. Applicants who have created an account on the PUEUP Patent Office platform can access the online application form. It is also possible to submit the application on paper.

Registration is irrelevant for the validity of a licence agreement. However, an entry in the register is needed in order to exercise the right vis-à-vis third parties

The record in the trademark register has a declarative effect

The scope of the authorisation to use a trademark under the licence agreement may be limited. Licence limitations may relate, for example, to the goods and services for which it is registered, the ways in which the trademarks may be used, and the period of the authorised use or territory. 

If the licence agreement does not limit the scope of allowed use, the licensee is entitled to use the trademark to the same extent as the licensor. Thus, the application and the licence agreement attached to it should clearly set out the limitations (if any).  

If the person has his place of residence or seat in the EEA or Switzerland, there is no need to appoint a professional representative in Poland. 

Persons who are not domiciled in the EEA or Switzerland can act only through a patent attorney, solicitor, legal counsel, or a person who provides cross-border services within the meaning of the Polish Act of 11 April 2001 on Patent Attorneys.

PLN 70 per entry in the registry and stamp duty of PLN 17 per submission to the Polish Patent Office of a document confirming the granting of a power of attorney.

Yes, it is. A pledge can be created at the request of the person concerned. The creation of a pledge is subject to disclosure in the trademark register. It is, however, possible to invoke the pledge on the trademark vis-à-vis third parties, regardless of its disclosure in the register.

The so-called “registered pledge” is effective upon entry in the register of pledges.