Decision No. G4/19 of the European Patent Office - contribution to the discussion on double patenting in Poland

Jakub Sielewiesiuk, Partner, patent attorney, European patent attorney, AOMB Polska

Marek Oleksyn, Senior Counsel, attorney at law, Sołtysiński Kawecki & Szlęzak

In light of the lately much commented decision of the Enlarged Board of Appeal of the European Patent Office in case no. G4/19 concerning prohibition of double protection of the same invention by means of a European patent, it is worth considering the current status of possible simultaneous patent protection in Poland.

The need to legally regulate circumstances where a single patent holder has protection under two or more exclusive rights whose scopes of protection coincide (in particular: exclusion of such protection - which is one of the possible solutions in this respect) arises primarily from the requirement of securing the legal situation of other market participants whose rights are limited by valid patents.

But let's start from the beginning and in proper order.

Poland as member of the EPO

Poland has been a member of the European Patent Organisation since 1 March 2004. Patents granted by the European Patent Office (EPO), stemming from European patent applications filed after that date may be validated in Poland and have the same legal effect in our country as patents granted by the Polish Patent Office (PPO) on the basis of national patent applications. The first validations of European patents in Poland appeared in 2005. According to the data in the annual report of the PPO for 2019, the number of validations of European patents in Poland in that year was 13,020 whereas the number of all European patents validated in Poland and remaining in force was 73,638. For comparison: the number of exclusive rights granted by the PPO and remaining in force was 21,959 (the total number of patents for inventions and protection rights for utility models).

Filing patent applications with the PPO and the EPO

Applicants can apply for protection of the same invention by filing a national application with the PPO and by filing a European application with the EPO. Typically, they first file with the PPO (e.g. because of better accessibility -much lower official fees and proceedings in the Polish language), and up to 12 months later they file a second patent application - i.e. a European patent application with the EPO, claiming priority from the first filing. The application filed first is referred to as the first application. The application filed later is called the subsequent application.

The first application and the subsequent application do not have to be identical but they often are. In order to properly claim priority, the subsequent application must relate to the invention described (disclosed) in the first application. In other words, priority holds to the extent that the subject matter of the subsequent application coincides with the disclosure of the first application.

Possibility of coexistence of a patent with the PPO and the EPO

The PPO and the EPO conduct parallel but independent proceedings. Experts of these offices make autonomous decisions independently of each other. It may therefore happen that both applications (the Polish one and the European one) are refused, that a patent is granted on the basis of only one of these applications or, finally, that two patents (the Polish one and the European one) are granted. In the latter case, it is possible to validate the European patent in Poland. The validated European patent will then coexist in the Polish legal system with the national patent.

When looking at the material scope of the monopoly resulting from such coexisting patents (1 and 2), typically we will see one of the following three pictures, wherein No. 1 is the Polish patent and No. 2 is the validated European patent, or the other way round.

(A) Identicalness	(B) Inclusion	(C) Overlapping / a shared part

Once a patent is granted, annual fees must be paid in order to maintain it in force, for a maximum of 20 years from the filing date. If the patent holder is not interested in maintaining the patent, it is enough to stop paying for protection, which results in the patent lapse at the end of the last year of protection that was paid for.

Let's look at three possible scenarios...

It is reasonable to assume that the applicant (and later: the holder of the right) acts rationally. In particular: as a rule, entrepreneurs and companies do not want to pay twice for the same thing, e.g., for maintaining two patents with an overlapping scope, or for actions aimed at obtaining one of them (which require effort, time, and money) in a situation where the other one has already been granted. There is therefore a fairly natural economic 'barrier' that prevents coexistence of patents on 'the same thing'. However, we should be aware that, for the time being, in Poland there is no legal ban in this respect.

In practice, one of the following three scenarios is usually seen:

» Scenario 1: PPO refusal and validation of the EP in Poland

In a situation where the proceedings before the PPO are still pending while the applicant gets a European patent granted, it is only natural that the applicant would like to abandon the national proceedings, validate the European patent in Poland and then maintain patent protection in the subsequent years, as needed.

Examples of such situations, drawn from the professional experience of the co-author (JS), are presented below:
Patent application entitled "Method of silvering surfaces, especially aluminium surfaces", Polish application no. P-392419 of 16 September 2010 - refused in May 2013; European application no. EP 11180709.5 of 9 September 2011 - granted in December 2012. The European patent was validated in Poland and remains in force.

Patent application entitled "Method of electrochemical-mechanical polishing of silicon carbide wafers", Polish application no. P-391076 of 27 April 2010 - refused in November 2013; European application no. EP 11163617.1 of 23 April 2011 - granted in April 2013. The European patent was validated in Poland and remains in force.

Patent application entitled "Multi-family housing prototype with split-level, variable height apartments", Polish application no. P-407724 of 31 March 2014 - refused in June 2020; European application no. EP 15187198.5 of 28 September 2015 (without priority) - granted in January 2020. The European patent was validated in Poland and remains in force.

In all of the above cases, the national proceedings in Poland (uncertainty of outcome) were abandoned in light of the obtained European patent (certainty of holding a patent).

» Scenario 2: Polish patent first - no validation of the European patent in Poland

In a situation when proceedings before the PPO end with a grant, and later the applicant obtains a European patent, the applicant does not need to validate their European patent in Poland (and incur the associated costs). As long as the scope of protection under the Polish patent is satisfactory to the holder, only the national patent in Poland would be maintained.

Examples of such situations, drawn from the professional experience of the co-author (JS), are presented below:

Patent application entitled "Method of producing graphene", Polish application no. P-391416 of 7 June 2010 - granted in August 2012, the patent remains in force; European application no. EP 11168749.7 of 6 June 2011 - granted in November 2018. The European patent was not validated in Poland (but was validated in selected other EPO member states).

Patent application entitled "Suspension of graphene oxide nanoflakes in water, its use and a method of preparation thereof", Polish application no. P-407166 of 13 February 2014 - granted in September 2017, the patent remains in force; European application no. EP 15707557.3 of 5 February 2015 (as the regional phase of an international PCT application) - granted in July 2020. The European patent was not validated in Poland (but was validated in selected other EPO member states).

» Scenario 3: Polish patent and validation of the European patent in Poland

However, it is also possible that the applicant completes the proceedings before the PPO with a grant and furthermore completes the proceedings before the EPO, also with a grant, validates this European patent in Poland, and then maintains both of these patents in force in our country.

In scenario 3, as long as the applicant is determined to complete both proceedings (before the PPO and the EPO), it does not matter which patent (Polish or European one) is granted first.

An argument for validating a granted European patent in Poland is the fact that protection under the European patent can be maintained longer than under the national patent priority of which is claimed - typically about a year later. Note that this is an advantage that always occurs, i.e., also in the absence of a national patent (scenario 1) or despite having a national patent (scenario 3).

By no means is this a purely academic possibility; to the contrary, it comes true as part of the legal system in our country.
An example of such a situation, drawn from the professional experience of the co-author (JS), is presented below:

Patent application entitled "One-stage method for production of HTP (high test peroxide) hydrogen peroxide for propulsion applications and system for production thereof":

Polish application no. P-413099 of 14 July 2015 - granted in May 2019, patent no. PL 233084 B1 remains in force.

European application No. EP 16179128.0 of 12 July 2016 - granted in August 2017. European patent no. EP 3118157 B1 has been validated in Poland and remains in force.

Interestingly, in this case the European application was identical to the Polish one. Each of the applications included - as the title suggests - two solutions, i.e., a method and a system designed to implement that method. Analysis of the claims of the patents granted based on these applications shows a rather complex relationship between the scopes of protection obtained: when it comes to the system, the Polish patent provides broader protection than the European one - the Polish patent covers what the European patent does, and more. As far as the method is concerned, however, it is the opposite. This is illustrated in the figure below:

system	method

The real need for legal regulations

It is therefore clear that there is already a real need in Poland to legally regulate the issues of double patent protection resulting from a European patent validated in Poland and from a Polish national patent or protection right for a utility model. As time passes, this need grows, because more and more often we would see scenario 3 discussed above being implemented by the patent holder. Regulation should concern at least the following aspects:

• the scope of actual protection under parallel overlapping rights,
• the question of validity of (one of) those rights - and its impact on the scope and validity of the other right,
• the question of changes in ownership of (one of) those rights - and their relation to ownership of the other right.

Poland vis-à-vis other EPO member countries

There are 38 member states of the European Patent Organisation. In 31 of them, the issue of simultaneous patent protection on the basis of a national patent and a European patent is regulated and, generally, not allowed. In Portugal, simultaneous protection is allowed. In Austria, Denmark, Finland, Iceland, Norway, Poland, Sweden, and Hungary simultaneous protection is not excluded. In Poland - in practice - this means that, for the time being, there are no legal regulations in this respect.

Practical implications in Poland

As mentioned above, the Polish patent law does not exclude the possibility for the same entity to obtain parallel patent protection in Poland on the same solution based on: (i) a national patent application filed with the PPO and the national patent obtained therefrom, and (ii) a European patent application filed with the EPO and the European patent obtained therefrom, later validated in Poland.

The recent EPO decision no. G4/19 on double patenting, and the above-mentioned scope of its admissibility in Poland, provide an excellent opportunity to take a closer look at some practical consequences of the same entity obtaining two patents that are in force in the same territory with respect to the same solution. Observations made in this respect are all the more interesting considering that two patents that are in force in Poland on the same solution may (as shown earlier in the figures): (A) claim an identical scope of exclusivity, (B) be in a relationship of inclusion with each other (e.g. the scope of exclusivity resulting from a national patent is included in the broader scope of exclusivity resulting from a European patent validated in Poland - or vice cersa), or (C) overlap each other, i.e., in a situation where, apart from the shared part covered by both patents, each of them claims some additional technical features concerning the protected solution that are not protected under the other patent. Below are some practical perspectives from which such a phenomenon may be looked at. We are leaving out of this summary the previously mentioned economic aspect related to the need to bear the costs of maintaining parallel protection of such co-existing exclusive rights.

Which weapon in case of infringement?

If, without the holder's consent, a third party uses a solution protected by co-existing patents in Poland, the decision on which of the two should be used in the infringement suit would be based on the holder's assessment of the facts of the case, including the extent of the third party's possible encroachment on the protected patent exclusivity, as well as the occurrence of one of the cases (A)-(C) presented above. Of course, the most interesting variant is the one where the technical solution used by a third party (e.g. a solution contained in a marketed product) falls within the scope of exclusivity that results from both coexisting patents. Such a situation raises an important question as to which patent is the appropriate legal tool for defence against infringement. Under such circumstances, the patent holder should be interested in and analyse at least such aspects as: (i) the impact of the proceedings conducted in Poland on any possible proceedings in other countries concerning the same technical solution, (ii) the effects that a final judgment in a case based on one of the coexisting patents would have on any proceedings based on the other one, (iii) the scope of claims that may be pursued in an infringement suit based on each of the patents.

Defence against invalidation

The validity of a granted patent may be challenged by a third party who can prove that a granted patent did not meet the legal patentability requirements.

Also, an attack on validity of a patent is a fairly standard means of defence when the holder takes legal action to enforce the patent, in particular by initiation of court proceedings. In this context - in view of last year's abolition in Polish patent law of the requirement that the entity requesting invalidation of a patent must demonstrate the existence of the so-called legal interest in seeking invalidation, thereby opening up access to invalidation for everyone - the holder's choice of only one of the coexisting patents as the cause of action will in no way affect the level of risk of an attack on the validity of both patents.

However, what is important in the context of proceedings to attack the validity of coexisting patents in Poland are the legal grounds for requesting invalidation with respect to a national patent and a European patent validated in Poland and the consequences that may ensue. The authority competent to assess a request for invalidation of both a national patent and a European patent validated in Poland is the Polish Patent Office. But a national patent shall be invalidated on the grounds set out in the Polish Act of 30 June 2000 - Industrial Property Law, whereas the grounds for invalidating a European patent shall be sought in the provisions of the European Patent Convention of 5 October 1973. And although the grounds for invalidation of both types of patents are very similar (because the cited provisions of the Convention and of the Polish Act are harmonized): (i) they are not identical, and (ii) the practice and case-law concerning the use of each ground have some differences too. This in turn may affect the decision of the PPO and of administrative courts on the validity of each of the two types of patents, also in a situation where they protect an identical solution.

Coexisting patents in trade

In the context of the simultaneous effect on the market of two patents that are 'identical' or very similar with regard to their scope of protection, reality may produce many interesting scenarios. As an example, let's think of a situation where one of the patents ceases to be property of the previous patent holder (or of a company in the holder's capital group) and feeds a competitor's portfolio of intellectual property rights.

Coexisting patents vs. company valuation

Last but not least, from the perspective of the value of a business, the fact that an entity holds two patents in Poland on the same solution may (but does not have to) have a significant impact on its market valuation. But a potential sale by the patent holder of one of the patents held (particularly to an entity from outside the patent holder's capital group) would certainly have an impact on such valuation. Such a transaction of selling one of the patents will in fact deprive the valued company of exclusivity to use the specific innovative solution.

Practical tips for entrepreneurs

Before the issue of simultaneous double protection is properly regulated in our country, Polish entrepreneurs who want to maximally benefit from the tools of Polish (national) and European patents should make sure to:

• properly prepare the application description, including properly drafting the patent claims, in order to use properly the priority right, obtain the patent and, after it has been granted, have a practical ability to enforce protection on its basis;
• conduct proceedings before the PPO and the EPO consciously and in a coordinated way, weighing the benefits and costs (see scenarios 1, 2 and 3 discussed earlier);

In view of the complexity and multi-layered nature of the aspects presented above, it will also be important to be supported by specialists experienced in this field - patent attorneys who professionally appear before the PPO and the EPO, as well as attorneys at law experienced in patents. This circumstance has also been noticed by the Polish legislator, who, in July 2020, introduced (with few exceptions) the rule of obligatory representation by a professional attorney in cases concerning protection of intellectual property rights.

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