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Archive for: Polish Act on Patent Attorneys

Polish patent attorneys, case VI SA/Wa 912/12

October 31st, 2012, Tomasz Rychlicki

On February 2012, the Polish patent attorney requested the President of the Polish Patent Office to delete her from the list of patent attorneys. She pointed out that due to lack of interest in services provided by her, she decided to return the Patent attorney identity card issued for her by the Polish Patent Office, and she also announced that on 18 October 2003, she has changed marital status and surnname. The PPO requested her to clarify the request. She did not respond to this properly delivered letter. On March 2012, The President of the PPO deleted the patent attorney from the list of professional representatives. She filed complaint against this decision.

The Voivodeship Administrative Court in its judgment of 29 august 2012 case file VI SA/Wa 912/12 dismissed the complaint. The Court ruled that the change of the surname of a patent attorney in connection with marriage does not cause a loss of power to conduct her professional activities, however, it may the basis to change of an entry in the list of patent attorneys. The PPO properly deleted the applicant from the list of patent attorneys as requested. The request left the PPO no chances to make any other decision than delivered.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys | Voivodeship Administrative Court.

Polish patent attorneys – amendments to the law

January 26th, 2011, Tomasz Rychlicki

On 26 January 2011, the Act of 24 September 2010 amending the Polish Act on Patent Attorneys, published in Journal of Laws No. 197, item 1308, came into force. According to recent changes Polish patent attorneys may now represent clients in matters related to combating unfair competition. Patent attorney whose practice is based on the employment agreement takes an independent position in the entity that employs him/her and is directly subordinate to the head of an organizational unit, and if the organizational unit employs two or more patent attorneys, one of them is responsible for coordinating the work done by all employees.

A patent law firm may be organized as a stock company in which only inscribed shares are allowed. The Act introduced also the obligation of professional development for patent attorneys. Meanwhile it liberalized advertising rules.

EU nationals who meet the conditions prescribed by law are allowed to practice in Poland. A foreign citizen has to be able to speak Polish language to the extent necessary to practice on the Polish territory, in particular, to act as a representative in proceedings before the Polish Patent Office, as well as in judicial and administrative courts.

The Act also introduces the rules on cross border services. These services are deemed as temporary and occasional activities of assistance in matters of industrial property that are performed by citizens of EU Member States or third country nationals who hold a long-term residence permit of the European Communities, which are also authorized to perform these actions in the Member State.

The person who wants to star cross-border services for the first time on the Polish territory, is required to submit to the National Council of Patent Attorneys a written statement regarding these services together with the certificate of profession translated into Polish, any document being a proof of nationality, and a copy of liability insurance.

A person who performs cross-border services in the Republic of Poland by representing a client in proceedings before administrative bodies or courts, is required to indicate to the authority conducting the proceedings a person who will be authorized to receive official letters in the Republic of Poland. In case of no indication of such a person, a letter will be delivered to the party represented, if he or she is a resident of the Republic of Poland. In other cases, a letter will be left on file with the effect of service, the body should instruct about such actions at the first delivery.

The Act also made changes with regard to patent attorneys’ traineeship (the scope, costs, final exams) and disciplinary responsibility of patent attorneys. The rules on suspending the professional activity were also introduced. The suspension has to take place if the patent attorney is employed in the Polish Patent Office, the administrative court, the European Patent Office or the Office for Harmonization in the Internal Market, take the office of judge, become a notary, a bailiff, or the prosecutor, assessor or a notary public prosecutor, or being on traineeship for the mentioned above functions.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys.

Polish patent attorneys, case I CSK 481/09

June 25th, 2010, Tomasz Rychlicki

The Supreme Court in its judgment of 16 June 2010, case file I CSK 481/09 held, that a party to the proceedings may request from its legal representative to compensate for damages only if the representative did not act diligent and failed to meet the prevailing standard of competence in his or her work on client’s behalf. The court pointed out that the representative (advocate, patent attorney) is responsible for the due care, and not for the result of the case. The fact that a representative has been unsuccessful in conducting a case, even if the reasoning of a judgment indicates that this was the result of his or her mistake, it does not mean legal malpractice, and that the client can claim compensation for the loss suffered by the this injury.

The final ruling is binding not only for the parties and the court which issued it, but also to other courts and public bodies and authorities, and others in all cases provided for in the law. This is called “material validity of the judgment”, also known as “extended validity”.

Categories: case law | Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys | Polish Supreme Court.

Polish patent attorneys – authentication of documents

April 25th, 2010, Tomasz Rychlicki

According to the provisions of Articles 76a § 2, 3 and 4 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in 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, a party may file copy of a document if it complies with the original one and its originality have been authenticated by a patent attorney acting as a representative. According to the recently amended Act on the authentication of documents, such documents should include: the signature of a patent attorney, the date and the venue for its preparation, and also on a request: the time of the transaction. If the document contains special features (annotations, corrections or damages) patent attorney will acknowledge it in the authentication. The authentication of originality that was included in the copy of the document has the nature of the official document. In special circumstances, the Patent Office may request a party to submit original documents.

Administrative, civil and criminal proceedings in trade mark cases in Poland

December 22nd, 2009, Tomasz Rychlicki

I. The Law
The main sources of binding laws in the Republic of Poland are the Constitution of 2 April 1997, acts passed by the Parliament, ratified international treaties and regulations issued, for example, by the Prime Minister or the Council of Ministers – Polish government. Regulations are issued for the purpose of implementation of acts. The main legal acts on trade mark protection in the Republic of Poland are the following.

I.A. Substantive law

The old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.
Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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.
Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with subsequent amendments

I.B. Procedural law

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.
Act on proceedings before administrative courts – PBAC – (in Polish:Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments.
Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments
Criminal Proceedings Code – CRPC – (in Polish: Kodeks Postępowania Karnego) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 89, item 555, with subsequent amendments.
Act on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych) of 11 April 2001, Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments,

I.C. EU law
Since 1 May 2004 which was the accession day to the EU, the Republic of Poland has been bound by all aquis communitaire including the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (CTMR). The CTMR is a part of the Polish Legal system and is directly aplicable by Polish Courts, especially by the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych).

II. Different routes, different proceedings
The right of protection for a sign being capable to be registered as a trade mark is granted by the Patent Office of the Republic of Poland (PPO). Trade mark holders in the Republic of Poland may protect their rights in civil and criminal proceedings. Moreover, they may also use the procedures before customs authorities.

The Republic of Poland is not a common law country and the courts are not bound by decisions of other courts. However Polish judges tend to widely recognise the decisions and verdicts of the Polish Courts of Appeal and the Polish Supreme Court. Only resolutions of the Supreme Court that are decided as a legal principle are universally binding. The decisions of foreign bodies such as the General Court and Court of Justice of EU may be recognised only as so-called persuasive precedents.

II. A. Administrative proceedings in trade mark cases
The Patent Office of the Republic of Poland is a central government agency responsible inter alia for receiving and examination of applications seeking protection for trade marks and deciding in matters related to granting rights of protection trade marks (decisions with regard to processing of national and International trade mark applications, decisions on the invalidation and the lapse of the right of protection for a trade mark etc.). The provisions of the Code of Administrative Proceedings shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by the IPL. Decisions made or orders issued by the PPO are liable to complaint lodged to the Voivodeship Administrative Court (VAC) in Warsaw. Judgments made by the VAC may be a subject of a cassation complaint filed before the Supreme Administrative Court (SAC).

II. B. Civil proceedings in trade mark cases
Trade mark infringement actions are brought before a District Court. There are no specific courts which have exclusive jurisdiction for resolving trade mark disputes, except the Court for Community Trade Marks and Community Designs which is strictly focused on the legal issues related to CTMs.

The Law on Industrial Property provides that a trademark owner’s rights will be deemed to have been infringed where there has been unlawful use of the mark in the course of trade, including unauthorized use of a trademark by a licensee and sublicensee. The remedies available to the trademark owner are as follows:

cessation of the infringement,
surrender of any unlawfully obtained profits,
compensatory damages in accordance with the relevant principles of the Civil Code or payment of a lump sum equivalent to a licence fee, or any other remuneration, which would have been due if the infringer had been authorized by the right holder to use the trademark. In this case, the trademark owner is obliged to prove that an intentional infringement of its rights has taken place,
announcement to the public of a verdict of the court (upon the request of a trade mark owner) as a whole or in part, or publication of information regarding the verdict,
a court order that the infringer (upon its own request, in case of unintentional infringement) to pay the relevant sum to the benefit of the trade mark owner if the cessation of infringement or forfeiture of the goods held by the infringer (means of manufacturing, materials) would be excessive, and the above-mentioned sum to be paid would fulfil the right holder’s interest.

The following cases, in particular, are also decided in civil law proceedings in accordance with the general principles of law:

for ascertainment of the authorship of an inventive project,
for ascertainment of the right to a patent, a right of protection or a right in registration,
for remuneration for the exploitation of an inventive project,
for remuneration for the exploitation of an invention, a utility model or a topography for state purposes,
for compensation for the transfer to the State Treasury of a right to a patent for a secret invention or to a right of protection for a secret utility model, a right of protection or a right in registration,
for infringement of a patent, a supplementary protection right, a right of protection or a right in registration,
for ascertainment of the right to exploit an invention, a utility model or an industrial design in the cases referred to in Articles 71 and 75 of the IPL,
for ascertainment of the right to use, in a local-scale activity, a mark registered on behalf of a third party as a trademark,
for ascertainment of the right to use a geographical indication,
for ascertainment of the loss of the right to use a geographical indication,
for the transfer of a patent, a right of protection for a utility model or a right in registration of an industrial design or a topography obtained by a person not entitled thereto,
for the transfer of a right of protection for a trad emark in the case referred to in Article 161 of the IPL.

II. C. Criminal proceedings in trade mark cases
The IPL defines counterfeit trademarks as identical trademarks illegally used or trade marks which in the course of trade can not be distinguished from the trade marks registered for the goods covered by the right of protection. The party aggrieved by the infringement has to commence a criminal action. Only after the filing of the motion can the proceedings be started and continued ex officio. The sole exception is when a person committing the crime in respect of a registered trade mark obtains permanent profits from its criminal activity or commits acts resulting in the turnover of counterfeit goods bearing the trade mark, which are of significant value. In such case the infringer is subject to more serious criminal penalties and proceedings will be started ex officio.

II. D. Custom seizures
Customs law, in addition to civil and criminal law, is the third administrative regime of protection for trade mark rights. Provisions of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property are directly aplicable on the territory of the Republic of Poland. The application for action shall be submitted to the Polish Customs Chamber seated at Modlińska 4 Street, 03-216 Warsaw.

II. E. ADR in trade mark cases
Where a domain name including a sign that has been registered as a trade mark by an unauthorized third party, the trade mark holder can use mediation, alternative dispute resolution (ADR) proceedings or civil court action to obtain the cancellation or transfer of such a domain. See also “Polish case law on domain names“.

Polish patent attorneys, case III CZP 118/08

January 29th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 23 January 2009 case file III CZP 118/08 held that an advocate, legal advisor or patent attorney who is acting as a substitute representative cannot authenticate a copy of the basic power of attorney that was issued in the name of the primary proxy. The court also ruled that the defect in form of a pleading based on improper form of powers can be removed by a confirmation of a party that issued the primary POA. The court should assign the other party a reasonable time limit for supplementation of a pleading and POA.

Polish patent attorneys, case III CSK 337/07

October 29th, 2008, Tomasz Rychlicki

The Polish Supreme Court in a judgment of 16 October 2004, case file CK III 580/03, published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2005/9/164/109, recognized the scope of representation for matters relating to unfair competition quite narrowly with regard to Polish patent attorneys’ profession.

Fortunately, there is a judgment of the Polish Supreme Court of 13 March 2008, case file III CSK 337/07. The Court was very brief and set a clear rule in one important sentence.

Patent attorney may be a representative in each case relating to unfair competition.

This case was brought before the Supreme Court by Unilever Polska. The company sued Przedsiębiorstwo Produkcji Lodów “Koral” – Józef K. for unfair competition. The defendant ran an advertising lottery promoted under the slogan “million ice creams to win”, which in Unilever’s opinion breached the unfair competition law, because the advertising slogan could mislead customers as to the origin of goods in such a way that it might prompt them to unconsciously purchase the goods promoted by the opposite party. At about the same time Unilever was running a similar advertising campaign. The court of first instance rejected Unilever’s complaint. The Court of Appeal agreed with the court of lower instance and also rejected Unilever’s claim that the plaintiff cannot be represented by a patent attorney in unfair competition proceedings which do not directly concern IP rights.

The Supreme Court provided detailed analysis of Article 2 of the Law on Patent Attorneys. According to the Court, extensive interpretation should be applicable, which means that it would be difficult to rationally evaluate unfair competition cases, due to their diversity, so that one can tell where a patent attorney can and cannot act as an agent. According to the Court, conducting a case against unfair competition in connection with IP matters requires full knowledge about combating unfair competition proceedings. Therefore, it would be against the law to prevent patent attorneys from being involved in all unfair competition proceedings. The Supreme Court’s arguments were also based on the fact that the Paris Convention for the Protection of Industrial Property explicitly defines IP issues in the broadest possible sense. The definition of the protection of industrial property also covers combating unfair competition.

Polish patent attorneys, code of ethics

August 20th, 2008, Tomasz Rychlicki

The Rules of Ethics for Patent Attorney Profession, PDF file, in Polish language. This is the unifed text with changes that were passed during IV National Convention of Patent Attorneys of 7 September 2005.

§ 3
Patent attorney shall perform his/her professional duties according to his/her best will and knowledge with
appropriate precision and conscientiousnes, acting in proper moderation and dignity.

Please note that Polish patent attorneys may represent clients in all industrial property law matters (i.e. patents, trademarks, designs, etc.) and there are no specific professions such as trademark agents/attorneys in Poland.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish law | Polish patent attorneys.

Polish patent attorneys, case II GSK 195/05

February 26th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 3 October 2005 case file II GSK 195/05 published in Orzecznictwo Naczelnego Sądu Administracyjnego i Wojewódzkich Sądów Administracyjnych 2006/2/65/199, ruled that according to the provisions of Article 9(1) of the Polish Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments, a patent attorney should act as agent in proceedings before the Polish Patent Office, Polish courts and other bodies deciding on industrial property matters. This article includes all forms of practice of the patent attorney (for the patent attorneys’ firm, for the employer and on the basis of civil contracts) and all matters of industrial property within the meaning of Article 2 of the APAT, that are decided in each of the aforementioned proceedings.

Polish patent attorneys, case II GSK 234/06

February 25th, 2008, Tomasz Rychlicki

Kulikowska & Kulikowski is a firm of patent attorneys (in Polish: kancelaria rzecznikow patentowych), constituted as a registered partnership. In the Polish legal system, there is no distinction between trade mark attorneys and patent attorneys: the legal profession, which deals with industrial property law, performs both those functions. The profession is regulated by the Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments, and is recognized by the Polish Code of Commercial Companies – CCC – (in Polish: Kodeks spółek handlowych) of 15 September 2000, published in Journal of Laws (Dziennik Ustaw) No. 94, item. 1037, with subsequent amendments, as a profession of public trust.

In 2003, a year after making an offer to buy trade mark rights, which was turned down, K&K applied to the Polish Patent Office for the registration of the FLESZ trade mark for their own interest. There was rampant speculation that the law firm might have represented a client, the identity of whom they wished to keep secret in order to obtain the trade mark at a lower price. K&K initiated the proceedings to revoke the FLESZ trade mark registered in the name of Inco-Veritas in 1993. K&K based its claim on the fact that Inco-Veritas had ceased use of the mark for 5 years. The PPO discontinued the proceeding.

In 2005, K&K appealed to the Voivodeship Administrative Court in Warsaw. That court overturned the contested decision and ruled that the law firm could move for the revocation of the registered rights since the FLESZ trade mark had not been used. A court ruling to support K&K’s claim is needed for the PPO to let the firm register the trade mark for themselves.

Subsequently, Inco-Veritas filed the cassation complaint before the Polish Supreme Administrative Court (SAC). The Court ruled that K&K could not be a party in the lawsuit concerning the revocation of the rights in question because it lacked any proper interest to do so. The Court based its ruling on regulations included in the APA which provides that a law firm may provide services in the field of industrial property only to third parties. The SAC also ruled that such firms are not recognized as entrepreneurs as defined in Article 87(2) of the Act of 19 November 1999 on the Law of Economic Activity – ALEA – (in Polish: Prawo działalności gospodarczej), published in Journal of Laws (Dziennik Ustaw) No. 101, item 1178. This law will be valid till 2011. Moreover, the SAC judged that K&K, being a law firm of patent attorneys and a registered partnership, was a company of public confidence. Accordingly, trade mark registration for its own use might undermine its credibility. The Voivodeship Administrative Court’s verdict was reversed and remitted for reconsideration. In 2006, the Voivodeship Administrative Court in Warsaw confirmed SAC’s judgment and rejected K&K’s claim.

K&K filed a cassation suit to the Supreme Administrative Court claiming that article 87(2) of the ALEA and article 72 of the APA were inconsistent with the Polish Constitution with regard to the freedom to acquire property rights. The Supreme Administrative Court in its judgment of 29 March 2007 case file II GSK 234/06 dismissed K&K’s suit and ruled that a patent attorney is not an entrepreneur and that the freedom of economic activities may be limited by important public interest. In this case, the limitation is recognized as the idea of “the profession of public confidence”. Judge Anna Robotowska said that it was clear that regulations limiting patent attorneys’ commercial activities are constitutional. The Court did not find it applicable to send the case to the Court of Justice of the European Communities because the lawsuit had begun in 2003, which is before Poland joined the European Union. The judgment confirmed that a Polish patent attorney’s prime role is to professionally represent clients seeking trade mark registration. Barring patent attorneys from registering trade marks in their own interest may also prevent them from unethical business practices.

Polish patent attorneys, case III CZP 14/06

June 29th, 2006, Tomasz Rychlicki

The Supreme Court in its judgment of 30 March 2006, case file III CZP 14/06, held that a legal advisor who makes the first procedural step and is acting as a representative of legal person, should under the pain provided in the law, attach power of attorney and a document showing that a person, for instance a CEO, who empowered the adivisor had all required powers to issue such POA. The evidence of such powers can be a copy of an extract from appropriate register of commercial companies that was authenticated by a legal advisor himself.

Polish patent attorneys, case CK III 580/03

February 24th, 2005, Tomasz Rychlicki

On the basis of Article 4, section 1, of the Polish Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments, the profession of a patent attorney is created to provide assistance in matters of industrial property: to private individuals, legal persons and entities without legal personality.

Article 2. Whenever in this Act is referred to the Industrial Property – shall mean:
1) acquisition, preservation, carrying out and enforcing of rights related to industrial property, and in particular to inventions, utility models, industrial designs and topographies of integrated circuits, as well as trademarks, trade names and geographical indications,
2) combating unfair competition in respect of items referred to in paragraph 1.

The scope of representation for matters relating to unfair competition has been recognized in the Act quite narrowly. It was confirmed by the Polish Supreme Court in its judgment of 16 October 2004 case file CK III 580/03, which was published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2005/9/164/109. The Court simply held that a patent attorney may be a representative in judicial proceedings, which are the subject of a claim arising from unfair competition in respect of items referred to in Article 2, section 1 of the APAT.