International Patent Litigation in Poland

The proprietor of the patent is entitled to bring a legal action against the infringer of the patent. If the patent is co-owned, any co-owner is entitled to bring a legal action against the infringer.

Additionally, legal action may be brought by the exclusive licensee, provided that (i) the licence has been duly registered on the patents register maintained by the Polish Patent Office, and (ii) the right to bring such legal action has not been excluded in the license agreement. Moreover, if the patent is encumbered by a pledge, the pledgee has the right to bring an action for discontinuance of a patent infringement.

Yes, it is possible to join more than one party as a defendant.

Yes, it is possible to join suppliers or other third parties into the proceedings. First of all,  if statement of claims concerning the same claims may be brought also against other persons who are not defendants in the case, the court, upon claimant’s application, may summon them to take part in the proceedings. What is more, both the claimant and the defendant may also serve a third party with a notice about the proceedings if the outcome of the case may be relevant for a possibility to raise claim by or against the third party. As a result, the third party may join the proceedings “as a side intervener”. Moreover, a third party, demonstrating a legal interest in resolving the case for a benefit of one of the parties, may intervene at his/her own initiative at any stage of the proceedings until they are closed in the second instance.

Patent infringement proceedings must be brought within 3 years from the date when the patent owner becomes aware of both the infringement and the identity of the person responsible for the infringement (it runs independently for each infringement). Further, in all cases, the proceedings cannot be initiated after 5 years from the date the infringement. As ruled by the Supreme Court (case number III CZP 30/20), if the infringement is repetitive in nature and continues at the moment of filing a non-monetary claim (including a claim for an injunction to stop the defendant infringing the patent) the five-year limitation period runs from each day on which the infringement occurred.

No, there is no requirement to invoke all potentially infringed patents at one.

Infringement and validity of patents are not decided in the same proceedings in Poland.

As a general rule, first instance patent infringement proceedings are heard by specialized IP division of District Court (Sąd Okregowy) in Warsaw. In the second instance, proceedings are heard by the Court of Appeal (Sąd Apelacyjny) in Warsaw.

The validity of a patent is considered and decided only by the Polish Patent Office. Such proceedings are similar to the court proceedings and they may be initiated if a party seeking invalidation can prove that the patent should not have been granted by the Office and is invalid (e.g. due to lack of novelty or inventive step). The claimant is not required to prove any legal interest, similarly as to the opposition proceedings.

No, Poland has not signed the UPC agreement.

Yes, a party (with a legal interest) may apply to the court for a declaratory ruling that it does not infringe the patent of the third party e.g. by seeking confirmation that the manufacture of particular products or using a particular process does not constitute a patent infringement. The alleged patent infringer has a legal interest in pursuing such claim when the patent holder: i) declared that the acts of the alleged patent infringer constitute a violation of a patent or ii) failed to confirm, within the duly set time limit, that the acts in dispute do not constitute a violation of a patent. The time limit set by the alleged infringer is considered to be set properly if: i) it was set in writing; ii) it is not shorter than two months from the date of delivery of the letter to the patent holder; iii) in the letter, the alleged infringer precisely specified which actions it intends to undertake and which may constitute an infringement of a patent, indicating the extent to which the infringement may occur, and called on the patent holder to explicitly confirm that these actions do not constitute an infringement.

The timing of proceedings differs in each case and will depend on many factors including the complexity of the case and how busy the court is. On average, the time between filing the claim at court and the first hearing on the merits may take up to 6 months. This time may be extended, when the party initiating the proceedings at the same time applies for an interim injunction or an order regarding the right of information (within the meaning of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights). In such a case the first hearing on the merits may be postponed until the proceedings regarding the interim injunction or right of information is decided.

As regards invalidity proceedings pending before the Polish Patent Office, it may take more than 6 months, from the moment of filing the claim, before the Polish Patent Office will establish the date for the hearing of the case.

In general patent infringement proceedings (as well as invalidity proceedings) may take between two to three years, or even more, in the first instance. The proceedings will often involve several hearings, each of which will usually last less than a day. The timing of the case will mostly depend on the complexity of the case and the amount of evidence to be examined by the court, especially, the number of witnesses, including expert witnesses summoned. Difficulties with finding a suitable expert witness may also cause considerable delay.

As from 2020 there is a specialized IP division in District Court of Warsaw in Poland with judges who should be specialized in IP law and who are trained in this respect. However, those judges are not required to have technical education. When technical expertise is necessary, the court will appoint a technical expert.

Yes, the court may stay the proceedings, if it considers that the outcome of the court proceedings will be affected by the outcome of the opposition at the EPO.

Yes, an action for nullification of a patent is a separate legal proceeding which can be issued by any person who demonstrates appropriate legal grounds for invalidation and such a party does not have to be sued for patent infringement.

FRAND license

According to publicly available information, to date Polish courts have not yet ruled on any case involving a FRAND license. Nevertheless, such an action for a FRAND license can be brought to the Polish Court.

Compulsory License

Under Polish law, compulsory license can be granted by the Polish Patent Office in the following circumstances: i) it is necessary in order to prevent or remedy a threat to state security, particularly in respect to defence, public order, protection of human lives and health, and the natural environment; ii) the patent is found to be abused within the meaning of the relevant provisions; or iii) the proprietor of a patent granted with earlier priority (i.e. a prior patent) prevents, by refusing to make a licence agreement, domestic market demand from being satisfied through the exploitation of a patented invention (i.e. dependent patent), the exploitation of which would enter into the extend of the prior patent.

Additionally, also in the decision on ceasing or removing the effects of the practices restricting competition, the president of the Office of Competition and Consumer Protection may impose the application of measures consisting of, among others, ordering the grant of license of intellectual property rights on non-discriminatory terms.

There are no contradictions to invoke FRAND defence in patent infringement proceedings pending before Polish courts. As a result of successful FRAND defence, the Court should dismiss patent injunction claims. As up to date Polish courts have not yet ruled on any case involving a FRAND license, it is rather unlikely that Polish Court would be willing to determine global FRAND rate.

As mentioned above, the judges do not have technical expertise. When technical expertise is required (as is usual in most patent cases), the court appoints one or more expert witnesses. An expert's opinion may be prepared as a written report or may be presented orally at the hearing (this is at the judge's discretion). In addition, the court may require the expert witness to appear in court for oral cross-examination.

The parties may also appoint expert witnesses and submit such written opinions to the court. However, such opinions will not be recognized by the court as expert evidence equal to the evidence prepared by the court-appointed expert witness (i.e. the opinion of the court-appointed expert prevails).

Under general rules of Polish civil procedure, a party may ask the court to make an order requiring the other party to submit particular documents to evidence their case. However, the party must specify particular documents that it requires (there is no general disclosure). What is more, there are certain institutions introduced to the Polish civil procedure regulating specialized proceedings in IP cases, aiming at extracting and securing the information necessary to uncover new facts concerning the patent infringement or to establish the accuracy of the factual claims raised by the claimant. There are three measures available, which are based on Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights: i) securing of evidence; ii) the disclosure or release of evidence; and iii) the request for information.

Securing the evidence can be applied if failure to secure evidence makes it impossible or excessively difficult to present or prove material facts and when there is a risk of destruction of evidence, or delay in securing evidence may make it impossible or excessively difficult to achieve the purpose of the evidentiary hearing, or when it is necessary to ascertain the existing state of affairs for other reasons. The court shall adjudicate such methods of securing the evidence as it deems appropriate according to the circumstances of the relevant case. The methods by which evidence may be secured include, in particular, the seizure of goods, materials, tools used for production or distribution, documents and the preparation of a detailed description of those items along with the collection of samples thereof, where necessary.

Moreover, the claimant who substantiated the claim may request that the defendant disclose or release evidence in their possession, in particular bank, financial or commercial documents, for the purpose of disclosing or proving facts. It may concern not only documents (banking, financial or commercial) but also other types of evidence such as items, collection of items, data bases etc.  The court should specify the time limit for the disclosure or release of evidence, the rules of procedure and the information about the protection of trade secrets. The court may also specify detailed rules for the use of evidence and may impose further restrictions if the defendant invokes the protection of trade secrets.

In patent cases, the party may also ask the court to make an order that the potential patent infringer (or third party who may possess or have access to the relevant information) must provide information on the origin and distribution networks of the goods or services which infringe the patent, including the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers and information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.

Upon a party‘s request the court may secure evidence before or during the proceedings until they are closed in the first instance. The party making such a request must substantiate the validity of its claims and demonstrate a legal interest in securing the means of evidence (eg. obtaining the evidence in the future will be impossible or very difficult, if it is not secured). In the ruling the court should specify the scope of access to the secured means of evidence and may limit or exclude making any copies of it. Moreover, it is required that the court sets a time limit by which the claim must be issued at court under pain of cancellation of the order to secure the evidence.

In every case parties may appeal against the judgement of the court of first instance. The ruling of the second instance court is generally final and binding.

In cases in which the amount of dispute is at least PLN 50,000 (approx. €11,000), the parties may file an appeal (cassation) to the Supreme Court. The cassation may be based on limited grounds only.

An appeal against the judgement of the court of first instance can be brought on the following grounds: error as to the facts, infringement of procedure or breach of material law.

A cassation to the Supreme Court can be brought on the following grounds: infringement of procedure and/or breach of material law by the court of second instance (in a cassation, a party cannot question the facts of the case established by the court of second instance). A cassation is only admissible if there is a major point of law that needs to be decided by the Supreme Court, the judgement of the appellate court involves serious procedural irregularities or if there are obvious material errors.

On average the proceedings before the court of first instance take 1-3 years. Proceedings before the court of second instance can take another 1-2 years. The proceedings before the Supreme Court also take up to 1-2 years.

Yes, in general filing an appeal has a suspensive effect therefore the ruling will not be exercised until the end of the proceedings in the second instance.

The costs of patent litigation depend on the complexity of the case. Total costs may be approximately €40,000 to €100,000 and in some complex cases, even higher.

These estimates include experts’ fees as well as a court fee which in monetary claims  depends on the amount of the dispute  (in claims over 20 000 PLN the court fee is 5% of the amount of the dispute, but not more than 200,000 PLN (approximately € 42,000). In non-monetary claims relating to IP rights the fixed court fee is 300 PLN (approximately € 65) for each such a claim.

The cost of appeals in patent litigation can also vary significantly. Usually, they are lower than the costs of the first instance proceedings. Average costs in appellate proceedings would be in the region of €20,000 to €50,000. This includes a court fee which in monetary claims depends on the amount of the appeal and is calculated on the same rules as the court fee in the first instance.

A successful party may recover costs from the other party. The quantum of the costs award is set by the court and should include all expenses necessary for pursuing claims or defending one's rights in the proceedings and in particular include the court fees, the costs of the court appointed expert witnesses and the attorneys' fees. The recovery of attorneys' fees is however capped by the statutory maximum fees, depending on the amount of the dispute (in non-monetary claims for patent infringement – max. approx. 150 000 PLN (€ 31 250). In practice however, the court rarely orders the recovery in the amount of maximum fees.

The main forms of ADR available in Poland are mediation, negotiation and arbitration. Negotiation and mediation are used in patent litigation. Arbitration is rarely used in patent litigation as disputes in this area do not usually arise out of a contract.

At the stage of lodging a claim with a court the claimant must indicate in writing whether the parties have previously attempted any ADRs, and if not, the reasons why.

Moreover, the courts should actively encourage parties to settle disputes at any stage of the proceedings. Nonetheless, ADR procedures cannot be initiated without the parties' consent.

Parties may conclude settlement at any stage of the court proceedings. Upon the parties' consent, mediation may be conducted before or during the course of the court proceedings. Parties may also ask the court to suspend the proceedings to allow the parties to settle their dispute amicably.

If there is an arbitration agreement between the parties, the jurisdiction of the common courts will be excluded.

The remedies available for patent infringement are (i) an injunction to stop the defendant infringing the patent; (ii) an account of profits; (iii) damages (only where the infringement was deliberate or arose from negligence) (iv) a court order as to the disposal of unlawfully manufactured products and of the means used in their manufacturing (destruction, removal from the market, delivery to the right holder); (v) an order for the publication of the judgment in a manner and to the extent specified by the court.

In Poland the court should grant injunction if the claimant has filed such a request and if the patent infringement has been confirmed during the proceedings. 

Nevertheless, the court may exceptionally refrain from granting the injunction and order an alternative remedy – a payment of an appropriate sum of money – instead, on the conditions that: i) the infringement of the patent is not due to the infringer’s fault; ii) the injunction would be disproportionately severe for the infringer and iii) the payment of an appropriate sum of money takes due account of the interests of the patent holder.

There are two alternative bases for calculating damages. First, they may be calculated according to general rules of Polish law. Under Polish law, damages are intended to restore the damaged party to the position it would have been in, but for the infringement. Usually, damages include the incurred loss and the expected profits which have been lost e.g. due to a drop in sales.

Second, the damages may be based on a reasonable royalty (licence fee) which would have to be paid if a licence had been sought by the infringing party. When assessing a reasonable royalty, the courts consider what royalty would be agreed between a willing licensor and willing licensee. In determining the royalty rate, the court will consider relevant factors including the practice as regards royalties in the relevant trade and expert opinion.

The quantum of damages must be based on the evidence gathered in court proceedings. Irrespective of the chosen basis for calculating damages, the burden of proof in this respect rests on the claimant. The amount of damages may be proven with all kinds of evidence admissible under Polish law. Usually it is established with evidence from an expert witness who has analysed the business operation of the parties.

If the exact quantum of damages is difficult to prove, the court may set the amount of damages, taking into consideration all the circumstances of the case.

There are no special remedies available, if the infringement was deliberate. However, note that deliberate actions may allow for the award of damages which can only be granted for “culpable” infringement (which include deliberate or negligent actions).

Upon ruling on the infringement of a patent the court may, at the request of a proprietor of the patent, recall infringing products. In practice, such request should be included already in the statement of claims and is only limited by the limitation period.

Courts are entitled to grant interim measures which are similar to temporary injunctions issued in common law jurisdictions. Interim measures can be issued before initiating or during the course of court proceedings. Interim measures must be coupled with the initiation of civil proceedings against the infringer. If an interim measure is issued before initiating the proceedings, the court sets a deadline for filing a lawsuit.

Such measures can be obtained in Poland on the grounds that the applicant demonstrates high probability of the patent infringement and a legal interest in obtaining the injunction. According to the Polish Code of Civil Procedure a legal interest exists if the lack of such measure would prevent or significantly hinder the enforcement of a ruling issued in a given case or otherwise prevent or seriously hinder satisfying the purpose of proceedings in a given case.

The latest amendment to the injunction procedure in intellectual property cases introduced a six-month time limit for the filing of an application for injunction, from the moment of becoming aware of the infringement. Failure to comply with this time limit will result in the court dismissing the application and the applicant not obtaining the injunction. Additionally, the applicant should inform the court whether any invalidation proceedings are pending in relation to the applicant’s patent (the court deciding on the injunction should take into account the likelihood of invalidation of that right). The last change is the introduction of a mandatory hearing of the respondent by the court before a decision on the injunction is made, with two exceptions to this rule, namely: i) when an immediate ruling on the injunction is necessary or ii) when the requested interim measure is enforceable only by a bailiff, e.g. by seizing goods.

Yes. Courts can issue interim measures based solely on the application of the claimant without notifying the defendant, provided that one of two conditions is met, i.e. i) when an immediate ruling on the injunction is necessary or ii) when the requested interim measure is enforceable only by a bailiff, e.g. by seizing goods. The party against which the interim measure has been issued, in such a case may file an appeal only after receiving the decision.

As a rule, interim measures should be granted promptly. Technically, the court's decision should be issued no later than 7 days from filing the application for issuing an interim measure. However, usually it takes 2-3 weeks from filing the application.

Yes. The decision of the court may be appealed within 7 days. An appeal against a decision of the court of first instance is decided by the court of second instance, whereas an appeal against a decision of a court of second instance is decided by a different composition of that court. As a general rule, filing an appeal does not suspend the effect of the interim measure. However, the court deciding the appeal has the option to suspend the injunction until the decision is made.

Once the decision to award the interim measure becomes final, the party may still ask the court to change or quash the decision, if the reason for granting the measure has changed or ceased to exist.

The court may make the enforcement of the interim measure conditional on the provision of security. The security should cover the potential claim for damages incurred by the other party due to the enforcement of the interim measure.

Yes. Interim measures, due to their temporary nature, remain in effect only until the completion of the main trial. Any final obligations may be imposed in the final judgement issued in the proceedings on the merits.

There is no established practice or case law regarding cross-border injunctions in Poland.

Anti-Suit Injunctions are generally not available in the form applied in the common law system and there is no specific Polish legal regulation explicitly allowing for the use of ASI. However, Polish legal doctrine indicates that based on currently applicable law, there are some possibilities which could enable the court to effectively apply ASI, but there is no established practice in this respect in Poland.

In June 2016 the District Court in Cracow granted a security, which had similar elements to ASI as it ordered the defendant to apply for a stay of proceedings on a claim for payment before the arbitration tribunal and prohibited him from its withdrawal for the duration of the proceedings pending in the District Court. The abovementioned case did not however concern a patent dispute and to date no ASI has been issued in any patent case. Moreover, the District Court’s order was later set aside by the Court of Appeal.