Polish practice as to limitation of patents as a part of a validity defence has undergone huge changes in the last 30 years. From complete flexibility to full rigidity in the face of the current uncertain position, it is important to carefully evaluate your procedural and substantive possibilities when making a decision on your defensive strategy.

The Polish substantive law has always seemed clear (albeit not too detailed) on the topic: “a patent may be invalidated in full or in part at the request of…”. In the 1980s and 1990s, the Patent Office issued multiple rulings partly invalidating patents based on the same clause. This limited number of examples was still quite diverse and included various scopes of partial invalidity. They covered, for instance, accepting that certain features from dependent claims can be moved into an independent claim, in some cases, enabling the addition of features from a specification to claims in order to maintain the patent.

The situation started to change when administrative courts took over as a judicial review body in an otherwise single-instance invalidity proceedings conducted by a panel of examiners at the Patent Office. Administrative Courts were not very welcoming of a situation in which an independent claim as granted was invalid but adding additional features from a dependent claim (or specification) would amount to a patentable (and potentially still highly valuable) invention.

Whereas there was a number of arguments being raised as to why such attempts to reshape a patent should not be allowable, the only one that really appeared to hold water was that the rigidity of procedural law did not allow such “fine-tuning” of granted patents. The formalistic rationale was that invalidation cases are distinct from prosecution proceedings. Thus, a changed invention (a new set of technical features forming a claim) is being declared binding without being subject to a prior individual examination in prosecution.

This reasoning effectively put available options for partial invalidation to rest for many years. Partial invalidation was regarded admissible only in the case of multiple independent claims or different categories of claims covered by the same patent.

Alternative routes when invalidity proceedings are pending

This has finally changed. A new procedure allowing for “patent limitation” has been introduced. It allows for pre-emptive limitation initiated at the request of a right holder filed at any time, but also deals with patent limitation in invalidity proceedings. Two alternative routes are possible once invalidity proceedings are pending:

  • Limitation within contentious proceedings (request for limitation and request for invalidation considered together within single proceedings);
  • Limitation in a separate procedure (prosecution-like proceedings considered by another examiner appointed to assess the limitation), while contentious proceedings are stayed (and to be resumed once the new limited patent exits these separate proceedings).

Analysis of cases where the issue of patent limitation was raised

The limitation procedure has been available for almost 4 years now, but the practice and case-law on how it should be processed are still limited. At LDS we examined approximately 20 cases in which the issue of patent limitation was raised. The conclusions are as follows:

  1. The procedure is quite time consuming. It could take from c. 6 months up to as much as 1.5-2 years to fully process it. This will likely add to the length of validity proceedings (while the patent remains in force for their duration).
  2. The Patent Office is reluctant to consider limitation as a part of validity proceedings. The majority of limitation requests made while ongoing invalidation are reviewed separately, and validity procedures are stopped (albeit no uniform method exists).
  3. Polish practice does not seem to assess the added matter rule as strictly as it is applied in proceedings before the EPO. The main requirement is that proposed amendments should not extend beyond the features contained in the application as filed, but within these borders right holders could and should remain creative. Limitation to dependent claims, introducing features derived from a description to claims, deleting a feature listed as an alternative, etc. – all these options may be reasonably considered.
  4. The use of this limitation procedure still remains quite unpredictable. It is also very unclear how auxiliary requests can be effectively used in such proceedings (though they appear allowed and should be attempted). Nevertheless, there is the opportunity and incentive to try new strategies that may help to shape and build future practice.

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