Patent revocation

A patent is an exclusive right to invention which grants the patent holder the right to exclude other persons from the use of the invention without his consent. It is a local law, which means that it is valid in the country in which it was registered and which was granted by the respective Patent Office. Patent revocation in Poland is possible in accordance with Article 89 of the Industrial Property Law Act, it may be revoked in whole or in part at the request of anyone who proves that the conditions required to validate a patent application have not been met.

From a business point of view, the proceeding strategy concerning patent revocations depends on the fact whether we are on the side of the claimant and want to question someone else’s patent that is in force and has monopolized a given market, restricting our freedom of action, or the fact that we are the party of it that is entitled to a patent granted to us by the Patent Office, and we want to counter this type of attack by defending our right and maintaining exclusivity within this territory. In addition, it should be borne in mind that periodic fees are paid for the granted patent, and costs were previously incurred for the development of this solution, for the examination procedure before the Patent Office which lasted several years, as well as costs related to the commercial implementation of this solution were covered. Hence, depending on the point of view, and in the light of different business scenarios, a situation may result in one party filing a patent revocation due to a blocked market area.

Prior knowledge of the existence of a given exclusive right can be obtained by conducting patent research, monitoring registers and patent databases, which will enable a timely reaction. A less favourable situation is the receipt by one of the parties of a warning letter regarding a patent infringement or a statement of claim. Highly often it is a significant blow starting a battle that can drag on, depending on a number of factors, unless an agreement and settlement is reached. The patent revocation process is conducted at the Patent Office by the Adjudicative Boards, where, on the basis of the submitted documents, it is determined whether the patent has been properly granted or, in the light of the revocation proceedings, the Adjudicative Board of the Patent Office must, however, issue a decision on the revocation of a patent. Any party may appeal against the decision of the Patent Office, which results in further proceedings before the Voivodeship Administrative Court in Warsaw, and as a consequence the proceedings may be brought before the Supreme Administrative Court.

What conditions may justify the paten revocation in Poland?

The patent revocation conditions may be established after the patentability of the invention has been verified. Such an analysis is conducted in relation to the state of the art relevant to the field which the subject-matter belongs to. The state of the art shall be held to comprise – in accordance with Article 25 (2) and (3) of the Industrial Property Law – everything made available to the public by means of a written or oral description, by use, displaying or disclosure in any other way before the date according to which priority to obtain a patent is determined. Furthermore, in the case of the examination of the assessment of solution novelty, the information contained in the applications for inventions or utility models using the previous priority, not made available to the general public, is also considered to be part of the state of the art, provided that they are published in accordance with the PPL Act.

Determination of the patentability of the invention consists in examining the solution in terms of the cumulative fulfilment of statutory requirements in accordance with Article 24 of the PPL Act, which involve: novelty, inventive step and industrial application.

The invention does not meet the requirement of novelty if it is possible to indicate evidence in the light of which all features of the solution or variant of the solution included in the application, taken as a whole, belong to the state of the art. The presented document damages the novelty of the invention, if the essence of this solution can be unequivocally and directly taken from this document.

The invention is considered to have an inventive step, unless it is obvious to the expert from the state of the art. If, for a person skilled in the art in a particular field of technology, a solution that is claimed for patent protection does not go beyond technical progress, but merely results clearly and logically from the state of the art, i.e. does not require the use of skills and knowledge beyond those attributed to the person skilled in the art, the solution is obvious and therefore does not have an inventive step. Several methods are used to demonstrate the lack of an inventive step, such as the “Problem-solution approach”, which is described in detail on the EPO website.

The invention is considered to be susceptible of industrial application if, in the technical sense, the article can be obtained or method can be used in any industrial activity.

For instance, in a process of revocation, it may be possible to indicate that the invention has not been presented and described sufficiently clearly and comprehensively to enable a person skilled in the art to realise the invention, or the patent claims do not define the subject matter of the claimed protection in a clear and concise manner or are not entirely supported by the description of the invention

What techniques are used to revoke patents?

One of the techniques used in the initial phase, even before the patent revocation claim is filed itself, is to perform a patent examination for patent revocation and to search for relevant documents in the state of the art. The patent examination in terms of patent revocation consists in the assessment of the patentability conditions, i.e. novelty, inventive step and industrial application of the solution in the light of the state of the art prior to the date of patent priority. This stage can be conducted using commercial search tools, electronic databases based on artificial intelligence in the construction of a search strategy and/or publicly available patent literature resources, Patent Office databases, by

• determining the state of the art relevant to the subject-matter, i.e. the solution claimed in the patent before the priority date,
• selecting and analysing patent documents in terms of the convergence of the solutions disclosed in them with the subject-matter,
• examining solution claimed in the patent in the light of the selected documents in terms of the patentability conditions.

The results of the patent revocation examination will allow to examine the risk of a possible patent revocation in terms of novelty and/or inventive step requirement.

How to file a patent revocation claim in Poland?

In accordance with the provisions, the patent revocation claim must be filed in writing with Patent Office of the Republic of Poland. The claim should include:

• designation of the parties and their addresses,
• concise presentation of the case,
• clearly defined request,
• indication of the legal basis,
• indication of the means of evidence,
• signature of the claimant and date.

The claim should be accompanied by:

• power of attorney, if the claim is filed by a representative,
• claim copies of the request in the number corresponding to the number of parties to the dispute,
• fee payment confirmation.

The Patent Office, in the course of dispute proceedings, resolves the revocation of patent cases. Furthermore, the Patent Office settles revocation of a supplementary protection certificate, trademark, utility model or industrial design, as well as revocation of a European patent granted in the course of proceedings as specified in the European Patent Convention. It is also possible to limit the patent during the proceedings for the revocation of a patent.

Patent revocation procedure

After filing the claim for patent revocation, the Patent Office of the Republic of Poland (UPRP) carries out a dispute proceeding in which both parties to the proceedings – that is, the Claimant and the Patent holder – participate. In these proceedings, the UPRP Adjudicative Board examines whether the patent meets the requirements set out in the Industrial Property Law.

According to the information published on the UPRP website, cit.: “It is important that, unlike notification or registration proceedings, dispute proceedings are adversarial in nature, i.e. they involve at least two parties who are in dispute. In these proceedings, the Patent Office of the Republic of Poland becomes, as it were, the “arbitrator” resolving the dispute.  It should be noted that in dispute proceedings, decisions of the authority resolving matters on the merits and issued after the hearing are not subject to a claim for reconsideration of the case , but to a complaint to the Voivodeship Administrative Court in Warsaw.”

Thus, according to the above, if the UPRP Adjudicating Board finds that the patent does not meet the statutory requirements, the Patent Office of the Republic of Poland issues a decision to revoke the patent. This decision may be appealed to the Voivodship Administrative Court with its registered office in Warsaw. The judgement of the Voivodship Administrative Court may be appealed to the Supreme Administrative Court.

Patent revocation outcomes

The patent revocation offers following outcomes:

• A patent that has been revoked allows the solution to be freely exploited within the given territory where it has been revoked. This means that anyone can use the invention, e.g. produce, sell or use it in their business activities.
• The party who obtained the patent revocation may claim appropriate rights.

Opportunities and swing into action

The chances of a patent being revoked depend on a number of factors, including whether the invention is indeed novel and inventive, as well as how well prepared the claim for revocation is. Hence, it is worth conducting an examination prior to filing the claim. The claimant who wishes to revoke a patent should also gather appropriate evidence to increase their chances of success. If an invention is not genuinely new and has been previously disclosed, or there are strong reasons to demonstrate a lack of inventive step by making the solution obvious to the person skilled in the art – then the chances of patent revocation increase.

Such proceedings may result in the patent revocation, making the invention for which the patent was incorrectly granted freely available to all who wish to use it within a given area. It is also possible to conclude a settlement between the parties during the ongoing dispute and/or grant a license.

Patent revocation abroad

Similar rules apply in other countries, but each time it is necessary to refer to national regulations and the specification of judicial decisions. Measures of a similar kind can also be conducted before the European Patent Office (EPO) in accordance with the applicable rules for cases before this body. The Unified Patent Court (UPC) has also been operating in Europe for almost a year, however Poland has not entered the UPC system at this stage. The Unified Patent Court may hear, among others, actions regarding revocation of European patents, resolve patent disputes in the same way as national courts, and the judgement will apply in all countries that have entered the UPC system – i.e.: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.

Patent revocation can be a difficult and time-consuming process. Therefore, it is worth consulting a patent attorney specializing in industrial property law before submitting filing the claim for patent revocation.