A new Industrial Property law came into effect in Poland on August 22, 2001. Some of its major features are set out below.

The main changes are to bring Polish patent law into line with the European Patent Convention (EPC) which Poland is set to join this year. They include adoption of the EPC's definition of patentable subject matter, extension of categories of prior art that can be destructive of novelty (but not as the basis of an allegation that what is claimed lacks an inventive step) to include prior unpublished Polish patent and utility model applications as long as their publication is foreseen and specific provision to permit claims such as Swiss-form claims directed to new uses of known compounds.

Other changes include publication of the application eighteen months from its priority date (after which broadening amendments of the claims will not be permitted), creation of a formal search report prior to examination, a change to post-grant opposition proceedings in which an opposition may be filed within six months after the publication of grant of the patent or utility model and a reduction of the period to three months following filing of an application within which formal supporting documents need to be filed. Provision is also made for exhaustion of the right to sue for patent infringement in respect of any product first marketed in Poland or a country having a free trade agreement with Poland by the patent owner or with his consent.

Procedurally, appeals from decisions of the Patent Office will now lie to the Administrative Court instead of the Patent Office Board of Appeals.

Under the new law it is necessary that patent licenses be in writing and it is specifically required that such a license terminates if the patent lapses. However, the parties will be "free to provide for a longer duration of the contract in respect of the provisions other than those governing the license, and in particular those involving payable services necessary for the purposes of exploiting the invention."

Under the new law, an industrial design will be available for designs which are "new, original and capable of being repeatedly reproduced". Features that may give rise to protection include shape, surface features, color, lines or ornamentation. The former requirement for claims will be abolished and protection will be determined by the drawings and description. The maximum term of protection will be twenty-five years. Additionally, it is expected that further changes will take place to bring Polish design law closer to the EU's Directive on protection of designs.

The definition of a mark has been extended to include all signs which are represented or are capable of being represented graphically, provided that such signs are capable of distinguishing the goods, including combinations of colors, three-dimensional shapes of goods or their packaging, as well as sounds.

The new law provides protection for well-known marks. The owner of a well-known mark who has registered it, or has a prior application for such mark which is subsequently registered, may prevent the registration of an identical or similar mark covering similar or dissimilar goods, if the registration of the junior mark would, without due cause, result in an unfair advantage to the junior applicant or be detrimental to the distinctive character or reputation of the senior mark.

In addition to collective marks, which were registrable under the previous law, the new law provides for the registration of "collective guarantee marks" (which we understand to be, in effect, certification marks).

Under the former law, an opposition could only be filed by a trademark owner if invited to do so by the Trademark Office through the agent of record. Under the new law, applications will be published for opposition purposes immediately after the expiration of a six-month period from the date of filing of the application and objections may thereafter be filed.

The period of non-use which renders a trademark registration vulnerable to cancellation has been increased from 3 years to 5 years following issuance of the decision granting registration.

Use of a mark in a form which varies from the form in which it was registered shall be considered to fulfill the user requirement, provided that the variation does not alter the distinctive character of the mark.

A geographical indication will be granted protection under certain conditions. However, a foreign geographical indication will only be granted protection in Poland if it enjoys protection in its country of origin. If approved, a geographical indication will be registered for an unlimited term which will run from the date of its entry in the Register of Geographical Indications kept by the Patent Office.