IP courts: How to ensure that we aren’t infringing someone else’s exclusive rights?


In the fifth part of our series, we focus on the provision allowing interested parties to verify whether actions they have planned or undertaken infringe the exclusive rights of others. A claim seeking a declaration of non-infringement is an example of a preventive measure heading off filing of an infringement action by the holder of IP rights. This measure allows litigants to obtain judicial confirmation of the legality of their own actions in terms of respect for the intellectual property rights of competitors.

Problem of demonstrating a legal interest

Until now, neither the Polish Civil Procedure Code nor the acts regulating specific intellectual property issues provided for a special procedure enabling litigants to obtain judicial confirmation of non-infringement of exclusive rights. If an entity wanted to obtain confirmation of non-infringement, it could file a claim for a declaratory judgment on the existence or non-existence of a given legal relationship or right under general rules, i.e. based on Art. 189 of the Civil Procedure Code. But this entailed the need to demonstrate during the proceeding that the claimant held a legal interest in obtaining such a ruling, which sometimes presented great difficulties in the case of claims seeking a declaratory judgment of non-infringement of IP rights.

Legal interest following amendment

This situation has improved with entry into force of the provisions establishing separate proceedings in intellectual property cases. These provisions introduce an autonomous definition of legal interest, easing the way for plaintiff to demonstrate a legal interest in obtaining a ruling. The justification for the bill stated that this change was designed to avoid the problem of incurring high costs for planned investments which might later prove to be wasted because the activity would turn out to infringe another person’s exclusive rights.

But the new Art. 479129 of the Civil Procedure Code applies only to claims seeking a declaration of non-infringement of a patent, supplementary protection right (to an invention), protective right (e.g. to a trademark) or registration right (e.g. to an industrial design). Therefore, if the claim seeking a declaratory judgment involves, for example, the economic copyright to software, the new regulations will not apply. This disparity does not appear to be warranted. In particular, it seems that it would be much easier to assess the risk of infringement of rights to a trademark or industrial design without resorting to the courts, than in the case of infringement of exclusive rights to software.

Significantly, the amendment does not introduce any new legal grounds to asserting a claim for a declaratory judgment, but only defines the ground of a legal interest under Art. 189 for this category of cases. From 1 July 2020 the court must find that the plaintiff has demonstrated a legal interest in obtaining a declaratory judgment if it presents evidence that:

  • The defendant has deemed the actions covered by the claim for a declaration of non-infringement of a patent, supplementary protection right, protective right, or registration right to be an infringement of its rights, or
  • The plaintiff has made a written demand to the defendant to acknowledge that the actions indicated and precisely defined in the writing (constituting the basis for the claim for a declaratory judgment) do not infringe a patent, supplementary protection right, protective right, or registration right of the defendant, but the plaintiff has not obtained the requested confirmation within a designated period of no less than two months.

The amendment therefore makes life easier for litigants seeking to obtain a judicial finding of non-infringement of another party’s exclusive rights. But only the practice will show whether claims of this type become a popular legal measure among businesses. Claimants may be deterred from filing suits of this sort by the need to disclose a great deal of information about their own operations in pre-suit letters to the rightholder, and then in the statement of claim and in proceedings before the court. This information could be highly valuable and include trade secrets.

Ewa Nagy, attorney-at-law, Intellectual Property practice, Wardyński & Partners