On February 27, 2020, the amendment to the Industrial Property Law came into force. The introduced changes adjusting Polish law to the European Patent Convention significantly change the patent invalidation procedure, and also give the patent holder the opportunity to limit the patent by changing patent claims.
According to the new wording of Article 89 sec. 1, “a patent may be declared invalid in whole or in part at the request of anyone who is able to prove that:
- the statutory requirements for a grant of a patent have not been satisfied;
- the invention has not been presented in a manner sufficiently clear and complete for it to be caried out by a person skilled in the art;
- a patent has been granted for an invention not covered by the content of the application or of the original application;
- the patent claims do not specify the subject of protection sought in a clear and concise manner or are not entirely supported by the description of the invention”.
Thus, the requirement of having a legitimate interest in requesting invalidation of the patent was abolished. In practice, this means that, unlike the previous procedure, now anyone can request the invalidation of the patent.
This change should contribute to shortening the patent invalidation procedure, as it will free the invalidation procedure of long multi-court disputes over legitimate interest and thus the Polish Patent Office will be able to move faster to substantive analysis of the grounds for patent invalidation such as ex. novelty, inventive step, industrial application…
These new provisions apply only to the invalidation proceedings initiated from February 27, 2020.
An additional change introduced from February 27, 2020 on the basis of art. 891 Industrial Property Law, gives the patent holder the possibility to limit the patent by amending claims.
The legislator enabled the right holder to request a patent limitation in three situations:
- First, the right holder can initiate the patent limitation procedure himself.
- The right holder may also take advantage of the possibility of limiting the patent during the patent invalidation procedure. Here, the condition for exercising the option of limiting a patent is submitting the request for limitation before the first trial.
- The patent holder may also apply for a patent limitation during the opposition proceedings against a valid Patent Office decision to grant a patent. In this situation, the patent holder can file a request for limitation of a patent until he files his response to the opposition.