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Archive for: patent law

Procedural law, case VI SAB/Wa 236/11

March 27th, 2012, Tomasz Rychlicki

On May 2009, FAKRO PP sp. z o.o. requested the Polish Patent Office to invalidate the European patent No. PL/EP 1706557 “window and insulating frame kit” that was granted under the European Patent Convention on the territory of the Republic of Poland. On December 2010, the company filed a complaint to the Voivodeship Administrative Court in Warsaw, arguing that the Polish Patent Office did not take any substantive action to decide the case. The PPO argued that it set the hearing date in February 2011, but the hearing was adjourned, and the Adjudicative Board of the PPO ordered the owner of the challenged patent to supplement the evidence in the case within 2 months from the date of the publication of the order. In addition, the PPO noted that the applicant’s representative requested a correction and supplement the minutes of the hearing held in February 2011, a hearing on this matter was set for June 2011. The Voivodeship Administrative Court in its order of 9 June 2011 case file VI SAB/Wa 73/10 discontinued the proceedings. The Company filed a cassation complaint. The Supreme Administrative Court in its order of 25 October 2011 case file II GSK 2108/11 repealed the contested order and sent it back for the reconsideration. The SAC held that the VAC should dismiss the complaint or decide on the failure to act.

The Voivodeship Adminsitrative Court in Warsaw in its judgment of 3 January 2012 case file VI SAB/Wa 236/11 ruled that the provisions of the Code of Administrative Procedure governing time limits for settling cases shall not apply to cases heard by the Polish Patent Office in litigation procedure, but the PPO should make all-out efforts to settle the case within six months from the submission of the request. The VAC ruled that the case for invalidation of the patent at issue was pending before the PPO for more than two and a half years and even during the proceedings before the Courts, it did not end in any decision. Inactivity of the Polish Patent Office in this case was obvious.

Patent law, case file II GSK 85/11

November 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 June 2010 case file VI SA/Wa 595/10 held that the terms “solution of a technical nature” or “technology” are not defined in the European Patent Convention. Thus, the development of these concepts depends on the practice of the EPO. There is no doubt that in practice, the EPO is using much more liberal criteria for assessing the patentability of computer-implemented inventions than in the initial period of application of the EPC. However, this position was not accepted by all parties to the Convention. In addition, the Enlarged Board of Appeal on 12 May 2010, refused to resolve the problem presented by the President of the EPO, on the interpretation of the exclusion of computer programs “as such” in the context of the criteria for patentability of inventions relating to computer programs, leaving the question to practice. It can be concluded that the practice of liberalization of evaluation criteria for patentability of computer-implemented inventions was not accepted by all experts of the EPO. There are cases of the EPO that were based on the same provisions of the Convention but came with divergent decisions, as well as cases in which almost identical provisions of the Convention and national laws are interpreted, respectively, by the EPO or national bodies in different ways. This case concerned the International Patent Application PCT/EP99/08958 “Record carrier, apparatus and method for playing back a record carrier, method of manufacturing a record carrier”.

The Supreme Administrative Court in its judgment of 19 March 2012 case file II GSK 85/11 reversed the contested judgment and the decision of the PPO. The Court held that the decree of the President of the Polish Patent Office on the patentability of inventions has an internal character, and it can not be the basis of the justification of the decision.

Patent law, case VI SA/Wa 327/10

May 27th, 2010, Tomasz Rychlicki

The Voivodeship Administrative court in its judgment of 28 April 2010 case file VI SA/Wa 327/10 held that the Polish Patent Office should provide translation into Polish of documents that were allowed as evidence in administrative proceedings. Such conclusions stem from the Act of 7 October 1999 on the Polish language published in Journal of Laws (Dziennik Ustaw) of 1999 No 90 item 999. The authority/body provides official actions of public administration in the Polish language. The aforementioned act obliges the authority to make foreign language translation of the document. The examination of the contents of the document should be conducted in Polish, the one and only official language of the Polish administrative proceedings. Only then one can say that the procedural step, which consists of taking evidence from a document written in a foreign language, has been carried out correctly. The constitutional principle, which is reflected in rules of the Act on the Polish language, provides that the official language of the Republic of Poland is Polish and it requires that the documents being major evidence that affects the outcome of the administrative case, has been translated into Polish. Only then will it be possible to assess the accuracy of the examination of the content of such document.

Patent law, case VI SA/Wa 112/10

May 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 March 2010 case file VI SA/Wa 112/10 held that adding to the patent application an idependent patent claim, that has a general feature that “electronic file is made available to anyone via the Internet”, which was made with the application for reconsideration, does not give the criteria of patentability to the “invention” that was disclosed in the application in question, according to article 28 point 6 within the meaning of article 24 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

Article 24
Patents shall be granted – regardless of the field of technology – for any inventions which are new, which involve an inventive step and which are susceptible of industrial application.

(…)

Article 28
The following in particular shall not be regarded as inventions within the meaning of Article 24:
(i) discoveries, scientific theories and mathematical methods,
(ii) aesthetic creations,
(iii) schemes, rules and methods for performing mental acts, doing business or playing games,
(iv) creations, whose incapability of exploitation may be proved under the generally accepted and recognised principles of science,
(v) programs for computers,
(vi) presentations of information.

The VAC held that the additional claim was just presentation of information.

Patent law, case II GSK 245/10

March 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in a judgment of 15 November 2009, case file VI SA/Wa 906/09 ruled that the scope of the European patent is the same as in the case of a national patent granted, and the case law of individual member states presents different approaches to the examination of the patentability of inventions using computer software. Article 27 of the PCT cannot be treated as a ban on the use of individual interpretation to assess the patentability of the invention for the protection of which one is applying. Article 27(5) of the PCT provides that the contracting States have flexibility in setting the conditions for patentability.

In this case, the PPO exhaustively referred to the fact of the grant of an European patent for the questioned invention and indicated the reasons for which it did not grant patent rights in Poland. Undoubtedly for the VAC, it was hard not to notice the importance of the referral by the President of the European Patent Office (EPO), to the Enlarged Board of Appeal of the EPO on the fundamental issues relating to the interpretation of articles 52 EPC in relation to computer programs. See case G 3/08, application filed on 22 October 2008. The questions asked by Alison Brimelow reflect the concerns and divergent interpretations which source is located in the line of EPO case law aiming to over-extend the concept of “patentability of inventions”. At the date of hearing of the case the mentioned referral was not considered by the Enlarged Board of Appeal of the EPO. Therefore, the unified position on the examination of the patentability of inventions using computer programs/software, which could be addressed by Member bound by EPC, did not exist yet. Given the above, the VAC held that the complaint should be dismissed because it did not include proper basis.

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 245/10 reversed this judgment and set the case back to the VAC for reconsideration.

See also “Patent law, case VI SA/Wa 2566/08“.

Patent law, case VI SA/Wa 1525/09

March 15th, 2010, Tomasz Rychlicki

On September 2008, the Polish Patent Office (PPO) refused to grant a patent for an invention entitled “method and device for access to the telecommunications network and for accounting telecommunications services”. The PPO held that this invention is not a technical solution. The applicant filed a complaint to the administrative court. The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 25 February 2010, case file VI SA/Wa 1525/09 annulled the decision, however, the VAC did not agree with applicant’s arguments that the PPO had to take under the consideration earlier decision of the EPO on the grant of the patent for the questioned invention. The Court held that the Polish Patent Office is not obliged to take into account in its assessment that was made from the perspective of the f the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments, the assessment that was carried out by the European Patent Office and its interpretation of the applicable law.

Categories: Art. 37 IPL | European Patent Convention | European Patent Office | patentable subject matter | Voivodeship Administrative Court.

Patent law, case VI SA/Wa 2279/08

October 27th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 27 May 2009 case file VI SA/Wa 2279/08 ruled that the Polish Patent Office is not an authority that mechanically approves patents granted by the EPO. The Court held that if the dispute between the applicant and the Polish Patent Office related to the nature of the invention, as is was in this case, by refusing to grant a patent, the Patent Office in principle cannot merely on its own conviction as to the subject of the patent application. The PPO should seek to gather sufficient evidence to support its position. Such evidence could include witness-expert testimony. The absence of a comprehensive hearing of evidence and basing the questioned decisions mostly on its own belief in the recognition, what is the subject of the patent application, and such a situation took place in this case, justified the infringement of Articles 7, 77 § 1 and Article 107 § 3 of the APC, as having a significant impact on the outcome of the case.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.

(…)

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

(…)

Article 107.
§ 1. A decision should contain: the name of the public administration body, the date of issue, the name(s) of the party or parties, the legal authority referred to, a ruling, a factual and legal justification, an advisory notice as to whether and how an appeal may be brought and the signature, name and position of the person authorised to issue the decision. Any decision which may be challenged by a petition to the civil court or a complaint to the administrative court should contain an advisory notice that such a petition or complaint may be brought.
§ 2. Other regulations may contain other elements which a decision should contain.
§ 3. The factual justification of the decision should contain the facts that the body regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law.
§ 4. If the decision fully reflects the demands of the party then there is no need to provide a justification for the decision, but this does not apply to decisions in contentious cases and decisions given on appeal.
§ 5. A body can also dispense with a justification of a decision in such cases if under current statutory regulations there is a possibility of dispensing with or limiting the justification because of the interests of State security or public order.

The Court ruled that the PPO should make a thorough analysis of the concept of “technical character of the invention” and should indicate why it interprets it very narrowly, taking in this respect the view of the EPO. The PPO should also consider whether the European patent has been granted for the same solution, and examine the merits of different assessment of the invention in Poland. During the re-hearing of the case the PPO will will take the position whether the applied solution has been sufficiently disclosed, and if so, only then will further examine its patentability, given that one of the elements of assessing the patentability of the invention is a technical solutions. Due to the lack of legal definition of a “solution of a technical nature” in assessing a technical nature of the present invention the PPO is obliged to indicate what in the opinion of the PPO is deemed as “technical solution”. The PPO will assess the technical nature of the claimed invention and will refer to the applicant’s arguments, if the interpretation of that concept made by the PPO would continue to differ on how this concept is understood to the applicant.

Patent law, case VI SA/Wa 2566/08

October 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 June 2009 case file VI SA/Wa 2566/08 held that it is up to the Polish Patent Office (PPO) to reconsider the matter in its entirety and refer to the statements and allegations contained in the request for the reconsideration of the case, taking into account the above guidance and administrative procedures by which the PPO is bound.

Looks like no big deal, right? But if you could read the whole judgment, which unfortunately is not available in English, you would understand that the Polish Patent Office will have to issue an opinion, and will have to justify and explain it appropriately, on the subject what is an invention and what is a computer program and why the PPO does not grant patents to so-called “digital” solutions.

In this context, I look forward to the EPO decision in G 3/08 case and to the SCOTUS’ judgment In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).

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.

Procedural law, case II GSK 350/06

November 24th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 April 2008 case file II GSK 350/06 held that the duties of the Polish Patent Office to take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public cannot be “transferred” to the litigation proceedings in patent cases based on the provisions of Article 256(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

4. (repealed)

This is because the Article 255(4) of the IPL includes provisions that fully cover this regulation and precludes the possibility of the complementary use of provisions of Article 7 and 77 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 255
4. The Patent Office shall settle cases in litigation procedure within the scope of the request and shall be bound by the legal ground invoked by the requesting party.

The Court also ruled the such findings do not preclude, of course, the activity of the Polish Patent Office to collect evidence, provided that they fall within an already pending case in litigation proceedings.

Patent law, case I ACa 907/06

July 9th, 2008, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 13 February 2007 case file I ACa 907/06 held that in a situation of conflict of rights related to two patents being in force, the case should be decided by the civil court in order to examine the scope of patent claims, and not only in the case of infringement of the patent but also in the case that the patent infringement does not occur. The Court ruled that the provisions of Article 189 of the Polish Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments, are deemed as lex speciali to the provisions of Article 284(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Patent law, case VI SA/Wa 2091/07

May 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 20 March 2008 case file VI SA/Wa 2091/07 ruled that the request for restitution of a term to file a request on rehearing is subject to article 58 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

Article 58.
§ 1. If the deadline is infringed it may be rescheduled at the request of an interested party if it appears probable that the infringement was not caused by that party.
§ 2. A request to reschedule the deadline should be made within 7 days of the reason for the deadline’s infringement coming to an end. However, the actions for which the deadline was set must be carried out simultaneously with the request being made.
§ 3. It is not possible to reschedule the deadline for making the request referred to in § 2.

However, provisions of article 243(1) deals with the time limits set by the Polish Patent Office, while the deadline for The request for restitution of a term to file a request on rehearing is a term defined in the APC.

Article 243
1. Unless otherwise stipulated in this Law, where in the course of proceedings a time limit to perform an act requisite, under this Law, for continuance of the proceeding has not been observed, the Patent Office may, at the party’s request, restore the time limit, provided that the party provides a plausible explanation that non-observance was without fault on its part.

2. Subject to paragraph (4), the request referred to in paragraph (1) shall be submitted to the Patent Office within two months from the date on which the reason for non-observance has ceased to exist, however not later than within six months from the date of the expiry of that time limit. At the same time, the requesting party shall be required to perform the act in respect of which the time limit was fixed.

3. A time limit to submit the request referred to in paragraph (2) shall not be restorable.

4. Where a decision has been taken on discontinuance of the proceeding for the reason of failure to observe a time limit for performance of a specified act, that decision, at the party’s request for re-examination of the matter, may be reversed, provided that the party provides in the request a plausible explanation that the non-observance was without fault on its part, while performing, at the same time, the act in respect of which the time limit was fixed.
5. Where the time limit for filing an application for the purpose of preserving the right of earlier priority or the time limit for furnishing a document expires on a day on which the Patent Office is closed to the public, the application or the document received on the first subsequent day on which the Patent Office is open to the public shall be deemed to have been received within the time limit concerned.

6. In respect of time limits, to which paragraph (1) is not applicable, and the non-observance of which has been caused by exceptional circumstances, the provisions on suspension of the course of negative prescription caused by acts of God shall apply accordingly. In such cases, the Patent Office shall give orders after having been furnished with relevant evidence by the interested party.

7. Notwithstanding the provisions of paragraphs (5) and (6), the Patent Office shall secure the reception at any time of day of letters delivered by interested persons.

The fact that this applies only to time limits set by the PPO is showed in wording of article 243(2) of the IPL. This whole provisions of article 243 of the IPL apply only to certain categories of terms. This limitation results from the wording of this provision.

Categories: Art. 243 IPL | Art. 58 APC | patent law | Polish Administrative Proceedings Code | Voivodeship Administrative Court.

Patent law, case Davoll v. Brown, 1 Woodb. & M. 53

February 15th, 2007, Tomasz Rychlicki

If you were ever wondering about the origin of this a little bit misleading term of “intellectual property”, you probably did some Internet research. The most popular resource is wikipedia.org of course. It will give you some help in this matter. The term “intellectual property” was used for the first time in 1845, by Judge Charles L. Woodbury’s in Davoll v. Brown, 1 Woodb. & M. 53, 3 West.L.J. 151, 7 F.Cas. 197, No. 3662, 2 Robb.Pat.Cas. 303, Merw.Pat.Inv. 414, PDF file.

Only thus can ingenuity and perseverance be encouraged to exert themselves in this way usefully to the community; and only in this way can we protect intellectual property, the labors of the mind, productions and interests as much a man’s own, and as much the fruit of his honest industry, as the wheat he cultivates, or the flocks he rears.

For all of you who are interested in this subject matter I added a link to the full text of this judgment. The case discussed patent law issues. I also edited the wikipedia post. If anynone of you have a copy of A. Nion’s book entitled “Droit civils des auteurs, artistes et inventeurs” I would appreciate if you contact me.

Categories: copyright law | patent law | US law.

Patent law, case 6 II SA 3937/02

October 24th, 2005, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 20 April 2004 case file 6 II SA 3937/02, ruled that a given solution is deemed as a patentable invention if at least one new element is not obvious in the technical area. If the inventive contribution lies solely in the area of non-technical solution it should be considered unpatentable. The Polish Patent Office considered that the interpretation of the VAC provided clarification on how to read the Regulation of the Prime Ministers of 17 September, 2001 on filing and processing of patent applications. The PPO considered that the invention must relate to material product suitable for use, that is described with specific technical characteristics relating to to its structure or composition , or specific technical process that have an impact on the material.

Categories: patent law | patentable subject matter | Voivodeship Administrative Court.