Patent law, case VI SA/Wa 1594/07

November 30th, 2008, Tomasz Rychlicki

On 1 February 1995, Koninklijke Philips Electronics N.V., Holandia filed a patent application No. 378756 “method of converting a series of m-bit information words to a modulated signal, method of producing a record carrier, coding device, decoding device, recording device, reading device, signal, as well as a record carrier”. This application was based on the International patent application PCT/IB85/00070.

The Polish Patent Office acting under Article 49(2) of the IPL noted that the evidence and materials may indicate the existence of obstacles to obtain a patent on solution as mentioned above. According to the PPO the application did not comply with the requirements of Article. 10 of the Act of 19 October 1972 on innovation, because its characteristic features mentioned in claims 1 to 28 do not apply to a solution of a technical nature. After the exchange of correspondence and documents regarding amendments to the mentioned above application, the Polish Patent Office issued a decision on discontinuance of proceedings. Philips filed request for re-examination of the matter, however this decision was upheld by the PPO. Philips decided to file a complaint.

The Voivodeship Administrative Court in its judgment of 7 December 2007 case file VI SA/Wa 1594/07 held that the contested decisions violated the law to an extent to justify their repeal. The VAC ruled that it should be assumed that the condition of rigor for discontinuance of proceedings of the patent application occurs only when the applicant is totally passive to the calls addressed by the Patent Office and in general it do not answer any calls during the proceedings. The Court agreed in principle with the applicant that there should be the possibility of discontinuance of proceedings in part. Since the patent application may cover several inventions connected with each other in such a way that they constitute one clear idea of the inventor, the PPO must take a position as to any claimed invention, also to decide on discontinuance of proceedings if the legal requirements included the IPL will be met and there will be no obstacles to the recognition that the matter included in the application in the relevant section is a divided case.